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Full text of "[Decisions of the Commissioner for Trademarks] / Commissioner for Trademarks."





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Abendroth Brothers . 

Abraham. 

Allen, Commissioner of Patents 
".The United States, etc. 

Ambrosia Chocolate Company, 

Amendment to Rules 19, 51, etc. 



("York" geographical, -not registrable.) 
(Label must be artistic production.) 

(Mandamus- -Lahel registration. ) 
(Label-Printers' ornamentation not reg.) 



American Circular Loom f~"o . ("Circular Loom" descriptive-— not reg.') 



" , in re . 

it 



in re . 



\ n ti 

I " " " in re. 

American G-lue Company, 

, in re. 
American Separator Company, 

Atkins & Company, E. C. 



Auerbach & Sons v. Hall & 
H aywar d C ompa ny , 



Baker & Co. Ltd. , Walter , v. 
Hawley and Hoops . 

Baker , Syracuse, Inc . , (William 

H. ), v.Walter Baker, etc. 

Beirber & Company, A. H. 
Barclay and Barclay. 



Bass,Ratcliff & Gretton.Lim. , 
v. Hartmann Brewing Co. 

Battle Creek Sanitarium 
Company, Limited, in re. 

Bauer & Co. ,A.v,Order of Car- 
thu s i an Monk s , etc. 

Bauer, A. & Co.v.Siegert et al. 
" " "• " v.La Societe etc. 

Bay State Belting Company y. 
■k Kelton-Bruce Mfg. Co. 

1 k w 1 m m. mm 



(Flakes of mica applied to the outside 
of a tube hot registrable.) 

ti ti 11 11 « n 11 / C\ 

11 11 11 n 11 11 "J 

(Coat-cf-arms of U.S. not registrable 
even under ten year proviso of Act.) 



(Right to amend applications under Act 
of 1881 — Re jection — Appeal.) 

(Drawing and description must agree.) 
(Question of division must be presented 

by appeal.) 
(No description permitted except where 

needed to express colors not shown.) 

(Interference—Weight to be given testi- 
mony of adoption and use prior to date 
given in statement.) 



(Mark must be published before declara- 
tion of an interference.) 

(Notice of opposition unaccompanied by the 
required verification is ineffectual.) 

(Butter and cheese same descript .prop. ) 

(Word "usually"not permissible in the 
description of color.) 

(Notice of Opposition must be filed with- 
in thirty dsys after publication.) 

(Opposition— Allegation of use of 
mark . ) 

( "<"hasseurs"and"Chartreuse"held to be 
similar in sound and appearance.) 

("Angostura" registrable to Siegert.) 
( "Benedictine " registrable . ) 

(Interf erence--Patent Office has no power 
to gWpel attendance of witnesses.) 

¥ 1 



14 
33 

17 

179 

229 

159 
208 

169 
205 
213 



142 

183 



131 
140 
188 
207 

53 

13: 

186 
68 

228 

156 

253 

19 

20 

22 

223 



Beckett , 

Beech Hill Distilling Company 
v. Brown- Mermen Company. 

Belknap & Co. , W. B. 

Bigbie Brothers & Company v. 
Bluthenthal & Bickart, etc. 



Bill 16560, relating to commerce. 



Bishop, 

Bissell Carpet Sweeper Co. 
ii ii n n 

Bleistein et al. v. Donaldson 
Lithographing Company, 

Block Brothers Clothing Co. 

Bloomington Canning n o. 

Bomhard v. U.S. Graphite Co. 

Boston Belting Company. 

Boston Fountain 7en Co. 

Brandsville Fruit Farm ^o., 

Bryant Electric Company, The 

Buchanan-Anderson-Nelson n o. 

v. Breen & Kennedy. 

n ii n it ii 

Buchanan & Co. , Ltd. , James , v. 
Frederick R.West's Nephews. 

Bullen, Henry L. 

Bulte T.Ingleheart Bros.et al. 



xn re 



Cahn, Belt & Company 
ii n n it 

i 

Camel Company, 
Canepa v. Boehm. 



Carborundum Company, The. 

Casey-Swasey Company, The. v. 
Rosenfield Brothers & Co. 



Certified copy of foreign reg. re quired. ) 130 



"Ten-Year" Proviso—Exclusive use "but 
not necessarily sole use required.) 

"Nitro-Hunter" anticipated "by "Nitro".) 

Interference --Priority --Owner shir, of 
mark. ) 



"The Gibson Girl" not registrable.) 

"Cyco Gold Medal" not registrable.) 
"Cyco Prize" not registrable.) 

Copyrights-- ^ircus-posters registrable. ) 






Chap a, Frank A. 



"Worthmore"--descriptive--not reg. ) 

Cancellation of registration.) 

Opposition fee not returnable.) 

Rep. of eagle and flags not registrable.) 

Signatures must correspond.) 

"Wine" descriptive--not registrable.) 

"Junior" and "Jr." not alternatives.) 

Opposition-- "Henderson" not refused on 

"Anderson 11 . ) 

Court of Appeals decision.) 

Black and Blue" not refused on "Black 
(and White. ") 

■{Pflrt »f yee cannot be returned.) 

Assignment disassociated from business 
void. ) 

Coat-of-crms not registrable.) 

ii ii ii n n \ 

Particular goods must be definite.) 

Registration prima facie evidence of 
ownership. ) 

Application must include description.) 

Contention that two interfering marks are 
not entitled to registration held in- 
consistent with Sec. 7 of the Act.) 

("Virgen of Guadalupe" registrable.) 



236 
16 

200 

86 

31 

14 
14 



190 
140 
189 
251 
115 
5 
141 



151 
187 



192 

264 

124 

125 
161 

42 

122 
127 

206 
77 






Chap ot -Shir law Company, The. (Examiner's ruling a judicial decision 

subject to appeal.) 



157 



Chicago Tire Proof Covering Co( "Vitrif ied"descript .or deceptive—not reg) 13 



China, trade -marks in. 

Classification of Merchandise. 

Cluett, Peabody & Company. (Registration may be refused after pub.) 

Cobb. ("Cobb" surname — not registrable.) 

Colchester. (Return of fee not permissible for mis- 

take in filing duplicate application.) 

Columbus Plate <fc Window Glass ("Columbus" registrable.) 

Conklin and Son v. The Albert (Timothy-seed and clover-seed goods of 
Dickinson Company. same descriptive properties.) 

it ii n ii n n / n ti n 11 h it \ 

Connors Paint Mfg. Co., The (Class of goods. Coat-of-arms not 
William. registrable.) 

ii H n "in re • " " " w " " " 

Continental Car and Equipment ("Continental" geographical—not reg.) 

Crescent Oil Company, The. (Picture of greyhound and words "Run-Lite" 

refused on registered picture of grey- 
hound, and certain other words.) 

Crescent Typewriter Supply Co. ("Orient" geographical — not regis.) 

Cross , 



Cross . 

Cross Company, Mark 



Crucible Steel Company of 
America. 



Cuba, foreign trade-marks in. 
ii ii n ii ti 



("Cross" too generic to describe a par- 
ticular kind of cross.) 

("Olivoint" anticipated by "Oliveine".) 



64 
166 
146 

11 

67 
257 



165 
176 



142 

184 

227 



103 
226 

36 
222 



(Pending cases may be amended to be brought 
under Ant of 1905. "Pending"cases do not 
include rejected cases.) 112 

it it it it it n 116 

(Immaterial mistake cannot be corrected, 
when not the fault of the Office.) 26 

46 
47 



Davis Sewing Machine Co., The. ("Manhattan" geographical—not reg.) 
Dawson, Halliwell & Company. (Registration must only be for goods 



Deitsch Brothers v. Charles 
Loonen. 



De Long Hook 8c Eye Co. v. 
Francis Hook & Eye 
Fastener p o. 



" g< 
r.) 



registered in foreign country 



(Certain weight should be given to ob- 
jections raised in interference cases.) 

(Form of cards not registrable as a 
trade-mark. Words "See That Hump" 
arbitrary mark.) 



63 
189 

269 






De Long Hook & Eye Company 



n it 

n it 



ii it ti 
tt ii n 



Densten v. Surnham. 



Diamond Chain and Mfg. fo. 

Dickinson Company, The albert 
v. Conklin. 

Diets, in re • 

Dodge Manufacturing Company. 



Draper Company, Walter H. 



Drevet Manufacturing Company 
v. Liquozone Company. 



Dr. Parker Medicine Company, 
The. 



Dr. Pepper Company, The 

ii it n ii 



Dr. Peter Pahrney & Sons Co. 
Ouncan v. Tombeckbee Bank. 
')rury Co. , The P. J. 

Idna Smelting & Refining Co. 
v.lTathan Manufacturing Co. 

!li Lilly Company, The. 

■Hi son-Harvey Co., The, v. 
Monarch. 

lmira Cotton Mills Company. 

ngelhard & Sons Company, A. 

upeptol Medicine Company. 

axon. 

&.3.Q,. Clothing Company, The. 

» rank and Gutmann v.HacWilliam 
nit tt it n 



"Dull Black" descriptive--not reg.) 234 
"Rust? Never."" descriptive— not reg.) 234 
"Genuine" descriptive—not registrable.) 235 

Interference — Subsequent depositions 
taken after failure to take depositions 
in accordance with notice will not be 
considered. ) 199 

Drawing must be confined to the mark.) 171 

Opposition — Amendment based en new 

grounds not permissible.) 206 

Protest against registration dismissed.) 13 

Representation of merchandise with mere 
name of an individual appearing thereon 
not registrable.) 247 

"Viscolene" refused on "Viscosine" and 
"Viscolite".) 104 

There is no right of appeal from the de- 
cision of the Ex. of Intf. overruling a 
demurrer to the notice of opposition.) 176 

"Liveroid" not registrable over "Liver- 
aid" or "Liverine".) 25 

"Dr. Pepper" refused registration.) 103 
Petition for rehearing denied.) 103 

Description should include features shown)l39 

"Pirm" implies existing partnership.) 122 

Opp. must be filed within thirty days.) 152 



"Monitor" held not to be descriptive of 

a patented article — registrable. ) 265 

Background need not be described.) 139 

Bull's head and picture of entire bull 

held to interfere.) 253 

"Amherst" geographical--not registrable.) 62 

"Engelhard" surname—not registrable.) 49 

label — Ordinary printing matter not reg.) 

Class of goods—division. ) 7 

"Just Right" descriptive—not reg.) 140 

Same mark used on suspenders and hose- 
supporters held to interfere.) 44 
Suspenders and garters for half -hose 
goods of different descriptive properties)120 


















Prank and Gutmann v.Macwilliam(Assignee should not "be made a party 

with the applicant and the registrant 
in the interference.) 



72 



Frazee v. Merchants ' Coffee Co. (Business must he transferred with assign.) 25 



Freiler v.Sheaffer, 
Funke Company, Joseph B. 

Funke v. Baldwin. 

Gaines & Co.,W..A. v. Carlton 
Importation Co. 



Gaines and Company, W. A. v, 
C. A. Knecht and Son. 



Gem Cutlery Co., The v. Leach, 

Geren. 

Giles Remedy ^o. v. Giles. 
it H ii H ii 

Gill Brothers Company. 
Golden & Co. 

Goodman -Leavitt-Yatter 
Company, The. 



("Golden Rod" awarded to Freiler.) 244 

("For ten years next preceding Feb. 20, 1905" 
in declaration, not sufficient to bring 

the case under the ten year proviso.) 193 

(Sec. 13 of the Act of 1905 construed.) 224 

("Old Jay" and representation of a jay 
held not to infringe words "Old fYow" 

and representation of a crow.) 146 

(Court of Appeals decision) 185 



( "Raven Valley"and representation of three 
ravens held not to infringe "Old Crow" 
and representation of a crow.) 147 

(^ourt of Appeals decision.) 130 

(Intf .Preliminary statements not required.) 79 

84 

("Health" descriptive--not registrable.) 43 

(Intf .--Registration of a trade-mark i3 
prima facie evidence of ownership.) 123 
("ourt of Appeals decision.) 148 

(Interference—Abandonment by registrant.) 48 



(Mark must be considered as a whole in view 
of prior registrations.) 

( "Rubberback" , descriptive or deceptive-- 
not registrable.) 



Graham Manufacturing Company, ( "Wedgewood" , common surname—not reg.) 
The Jame s . 

Graham Bros.& Co.v.Norddeutschedntf . --Applications should be amended 
Wollkammerei etc. to bring them under Act of 1905.) 



Green. 



("Hew Victoria" registrable.) 



C-riserin-Werke Paul Camphausen( "ases must be amended within one year 



G. m. b • H. 
Gwinn Bros. & ^o. 

Habirshaw, William M. 



Hall and Ruckel v. Ingram. 

W II H It w 

Hansen v. Inland Type Foundry 



of last Official action.) 

(Representation of anchor and sea-monster 
refused on anchor and word "Anchor.") 

(Declaration should conform with language 
used in Statute.) 



Company, 



("Zodenta" not refused on "Sosodont".) 
(Court of Appeals decision.) 
(Examiner of Interference's postponeme 
of case adhered to.) 



nt 



239 

27 
14 

112 
59 

143 

152 

280 

135 
202 

271 



Hamilton and Hamilton, Jr. 



Harding v. People. 



Harris. 



Hawley and Hoops v. D. Auer- 
bach & Sons. 



Hawthorne , Jean . 

Herbst Importing Company, S.C 



Herbst v. Records and Golds- 
borough v.The Rothenberg Co. 

Hirsch & Company, S. v. -Jensen 
v. H.J.Hellert & Sons v. 
Sample & Company. 

Hirschwan Company, The J.C. 



Holbert , 

Hooker, Corser and Mitchell 
Company, The. 

Hopkins. 

Howe & Son, J. W. 

Howe Scale Company of 1886 
and Fay-Sholes Company v. 
Wyckoff Seamans & Benedict 

Hoyt Shoe Company, P. M. 

Hoyt Brothers & Company, 

Hunter, in re. 



Illinois Hydraulic Cement Man- 
ufacturing Company v.Utica 
Hydraulic Cement Company. 

Indian Portland Cement Co. 



International Silver Company 
v. William A.Rogers , Limited. 

Iowa Soap Company, 



Requirement for division regarded as a 
refusal to register and is appealable.) 123 

"After the passage of the act" equi- 
valent to "After the act goes into effect) 98 

Application should only include goods of 
same descriptive properties.) 119 

Amendment to notice of opposition per- 
mitted, to set forth specific dates, 
after thirty days have expired.) 138 

"Silverdip" descriptive--not reg.) 285 

"Chancellor Club" refused on "Club 
Cocktails.") 190 

Interference—Motion to take surrebuttal 
testimony. ) 211 

"Crystal Lake", "Crystal Run", "Crystal 

Glen", and "Crystal Spring", for 

whisky, held to interfere.) 167 

Representation of mattress with baby there- 
on refused on picture of a mattress.) 153 

"Optine" rejected on "Optal".) 98 

"Cantripum", misspelling of the descrip- 
tive phrase , "Can't rip them"--not reg.) 44 

"Oriental Cream" geographical—not reg.) 236 

Labels must be artistic.) 182 

"Remington-Sholes" and "Rem-Sho" regis- 
trable over "Remington Standard Type- 
writer".) 109 

"Samsoncalf "refused on"Our Little Samson". )69 

Drawing must agree with specimens.) 191 

Assignment must be acknowledged to be re- 
cordable— Sec. 10 of Act construed*) 221 

Showing required of applicant for can- 
cellation. Prima farie case necessary.) 254 



Representation of an Indian's head en- 
closed in a circular band refused on 
Indian's head with a feathered head- 
dress.) 

"Wm. A.Rogers "held to be similar to "Wm. 
Rogers Mfg. Co. "and "Wm. Rogers & Son") 

"Magicwasher" refused on "Magic".) 



262 

137 
198 



■■■ 









Isaacs & Company. 

Jewell & Vinson. 

Jewell Belting Company. 

Jones & Co., W. H. v. Carlton 
Importation Company. 

Keet & Rountree Drygoo&s Co. 

Kelly Co., The D.v.The Theobald 
and Son Co. v. Joseph Striebic 
v.B.Kuhl & Co.v.Sig.fc Sol H 
Freiberg. 

Kenyon, Thomas IT. 

ii n it 

Kenyon. 

Kiffe and Disch. 



Kingan Packing Association, The 
ii ii ii « 



Kops Brothers v. Royal Worces- 
ter Corset Company. 

Kops Brothers. 

Laundry Blue Company, in re. 

La Republique Francaise et al 
V.Saratoga Vichy Spring ^o. 



"Maderight "descriptive— not registrable. ) 
"Ox Blood"descriptive— not registrable.) 
"Gibraltar" held to be registrable.) 
"Old Jay" refused on "Blue Jay".) 

"Ozark" geographical— not registrable.) 

Held that the words "Mill Springs", 
"Mill Stream", "Mill View", and 
"Mill Brook", for whisky, interfere.) 

"Catarrhal Jelly", descriptive—not reg.) 

n ti », ii n 

Amendment to date of use not permitted 
under a certain condition.) 

"Special" descriptive—not registrable.) 

Particular goods must be definite.) 
•i ii ii ti •• 

"Autogirdle" and "Auto-Carter" held 
to interfere.) 

"In Curve" descriptive— not reg.) 

Assignments must identify cases.) 

"Vichy" generic— not registrable.) 



242 
24 
51 

150 

99 



178 

172 
190 



198 

52 

139 
147 

136 

154 

53 

37 



La Societe Anonyme des Mines et("Dry white oxide of zinc" held to be 
Ponderies de Zinc de la different from "White oxide of zinc 
Vieille Montagne. ground in oil.") 



Lea v. The New Home Sewing 
Machine Company. 



(Priority— Character of Proof 
necessary. ) 



Levering Coffee Company v. The (Judgment entered in favor of senior 

Union Pacific Tea Company. party where junior party failed to print 

testimony without excuse.) 

Lewis & Brothers Company v. (Admission of amendments and disclaim- 
Phoenix Paint & Varnish ers.) 
Co.v. National Lead Co. 

Lion Pig and Date Company , The . (Label must be descriptive of the goods.) 

Listman Mill Company. (Drawing must conform to specimens.). 

Madison Medicine Company. (Surname qualified by portrait reg.) 

Magic Curler Company v. Porter ( Cancellation— Registrant ' s right to mark) 

Magne-Silica c . (Drawing and specimens must accord.) 



137 
40 

158 

155 
1 
131 
11 
255 
170 






Marsh Brothers Company. 


Martin v. Martin & Browne Ho. 


n ii ii n n ti 


Masters & Company , Charles A. 


May & Company, F.P. 


McLoughlin Brothers v. Flinch 


Card Co. 



McLoughlin v. The Raphael Tuck 
& Sons r:o., Limited* 



Meckert-Kanne , Emma Marie. 

Meinecke & Co. 
Mitchell, John. 

Modoc Soap Company, The. 
Monarch Tobacco Works. 

Muller v. The Schuster Co. 
Mulligan v. Tempest Salve Co. 
National Toilet Company, 

ITational Phonograph ^o.jin re 

Newberry Company, J. R. v. 
Joseph J.O'Donohue * s Sons. 

Newman Company, George A. 

Old Classification of trade- 
marks . 

Oppositions. 

Outcault v. The New York 
Herald Company. 

it n it n ii 

Paragon Malt Extract Company. 
Paramount Knitting Company. 
Parker Medicine Co. 

•Peck Brothers Company. 

... . _ - 



Division required in goods.) 

Notice of opposition must be signed by 

party damaged.) 

Sec. "a" of Trade-Mar 1 : Act construed.) 

"Yale "geographical and surname--not reg.) 

"Beaver Brand "descriptive— not reg.) 

Testimony in oppositions must be print- 
ed within 21 days after final hearing.) 

Held that the penal provisions of 
original section 4963 Revised Statutes 
have no extraterritorial operation.) 

"Johann Marie Earins" refused on certain 
registered marks.) 

"Perfection "descriptive--not reg. ) 

"Radium Radia" descript.or deceptive — 
not registrable.) 

"Modoc" name of Indian tribe- -not reg.) 

Words "Pick and Shovel"and representa- 
tion thereof refused on the word "Pick" 
and representation thereof.) 

Testimony. ) 

Appeal—Refusal to enter judgment.) 

"Satinola" refused on "Satin", "Satin 
Skin", and "Satin Scent".) 

"Standard" descriptive--not registrable.) 

Interference—Evidence of Transfer of 
Trade -Mark. ) 

Signature need not be witnessed.) 



(Opposition. ) 

(Interf erence— Motion to suspend pro- 
ceedings- -Appeal. ) 

("Peerless" descriptive— not reg.) 

("Rock Ribbed" refused on "Rock Bye".) 

(See under Br. Parker.) 

(Class of Goods— Plumbers' Supplies.) 



42 

134 
154 

48 

62 

181 

28 

71 

66 

65 
69 

15 

141 
184 
142 

103 
243 

56 

24 

18 
100 
191 

202 

153 

231 

25 

24 









Penn Tobacco Co. 

Pfister & Vogel Leather Co. 

Philadelphia Watch Case Co. v. 
The'DuVber Watch ^ase Mfg. 
Co. t. The Keystone Watch n ase 
Co.v.Syron L.Strashurger Co. 

Phillies Chemical Co. The Chas. 

• H. 

Phillips, John Quincy. 
Pietro. 



Pioneer Suspender r o. v. Lewi3 
Oppenheimer ' s Sons . 



Pittsburgh Valve , Foundry and 
Construction Company. 



Proposed New TradeMark Law. 
Pushee & Sons, J. C. 
Re". Cross Act. 
Reynolds & Co., Wm. T. 



Rice & Hochster v. Fishel, 

ITessler & Co. 

it ii ii « « 



Richardson, Levi S. 

Rippen. 

Rogers & Havard. 

Rose Shoe Manufacturing Co. 

v. A. A. Rosehbush & Co. 
A.A.Rosenbush 2c Hompany v. The 

Rose shoe Manufacturing r o. 

Rosenav/eig v. Forbe3 . 

Ruppert . 
Sacks . 



Sanitas Hut Pood Co., Ltd. 
Sauers Llilling Compsny, The. 



Affidavits.) 

Class of Goods--rejection--Appeal. ) 

"Silveroid", "Silverode" and "Silverine" 
held to interfere.) 



More than one class of goods not 
permissihle. ) 

"Cold Busters"descriptive— not reg.) 

Mark must correspond with foreign 
registration. ) 

Registration for cartons invalid, where 
actual trade which mark represents is 
contained in the cartons.) 

"Atwood" surname — not registrable . Mark 
must not he described. Date of use of 
entire mark must he given.) 



"My Dollar Brush" descriptive--not reg.) 



Label must be artistic,, besides includ- 
ing an artistic trade-mark.) 

Interf erence— Registrability of mark.) 

Opposition—Change in Firm—Evidence 
of Transfer of Title.) 

Label must be descriptive of the goods.) 

Label— Foreign coat-of-arms not reg.) 

"Fineeting" descriptive—not reg.) 

Priority. ) 

Interf erence— Credibility of testimony.) 



Effect of prior registration of label 
including the trade-mark. 

Print— Title must appear on the print.) 

"Union" geographical and descriptive— not 
registrable . ) 

ii »i 11 n it it n ii >i 

"Sanitas" registrable.) 
"Infallible "descriptive --not reg. ) 



199 
127 

168 

130 
278 

223 
238 

230 
74 

240 
98 

45 
182 

183 
34 
46 

178 

218 
220 

158 
160 

225 

248 

50 
247 



Scharff, L. &. A. 

Schotten & Company, William. 

Schneider v. The Union 
Distilling Co. 

Schuster Co., The v. Muller. 

S ibley Soap Co. v. Lambert 
Pha rma c a 1 C omp a ny . 

Siegert v. Candolfi, et al. 
Siegert , J.G.B. & Hijos, in re 

Siloam Springs Water Company. 

Silver Lake Co. v. Samson 

Cordage Works. 
Sleepy Eye Hilling Company. 
Smith-Brisco Shoe Company.. 



Smith Ale Brewing Co., The 



Smith y. United Shirt Vest Co. 

Smi th . 

Smoot Drug Co., The v. Pitts- 
burg Pharma^al Company v. 
Gertzen v. Griswold. 

Snyder , 



Societe Ananyme de laGrande 
Distillerie etc. 

St. Louis Union Trust Co. 



Spalding, A. G . & Bros. 
it ii ii ti ii 



in re 



Standard Underground Cable Co. 

Ii .. n i. in re 

Standard Varnish Works v. The 
David B. Crockett Company. 



Star Distillery Company, The 



"Spring Hi 
Valley".) 



ill"antiripat 



ipated by "Spring 



"1904", for coffee-descriptive--not reg.) 



243 



16 



Interf erence— dissolved on mark register- 
ed under Act of 1370.) 155 

Priority — Goods of same descript .prop. ) 215 

Interferenr.e--right to make claim. Ir- 
regularity in the Declaration.) 12 

Complainants entitled to restrain 

defendants from using the word "Angostura") 204 

Trade-mark will not be republished mere- 
ly to extend the thirty days for filing 
oppositions.) 207 

"Ozark" geographical—not registrable.) 70 

Interf erence--Issue not registrable.) 115 

Pub. no bar to requirement for descript.) 154 
Maltese cross having a monogram and other 
inscription thereon not registrable over 
a Maltese cross without monogram and in- 
scription. ) 



Interference — Jurisdiction of Ex. of 



Robert, v. Beadleston & Woerz Trade-Marks & Interferences defined.) 



Interf erence--Burden of Proof.) 

"Kleanwell" descriptive--not reg.) 

"Kroupol", "Croupine", "Crouplene" and 
"f'roupaline" held to interfere.) 

"Diamondust" refused on "Diamon" and 
"Diamond Mills".) 

Certain features should be removed 
from the drawing.) 

"Charter Oak", although name of patented 
article, registrable.) 

Particular goods must be set forth.) 

II It II It It M II 

Registration must include entire mark.) 



No interference between two diamond- 
shaped figures which contain other en- 
tirely different features.) 



[Representation of a star and word "Star" 

refused on prior registered marks.) 

. _____ . __ ----- - 



121 

128 

135 
51 

211 

98 
106 

274 

144 
173 

138 
175 

133 

133 












Steinecke Company , R. 
Sternau, Sc Company, S. 
State v. Bemis. 

State v. Mounts. 
Sterling v. Huntzman. 

Strauss . 
ii it 

Stransky . 

Strobel & Wilken Co., The. 

Strong & Garfield Company. 

Sutton. 

Tallmadge. 

Taussig v. Taussig. 

Taylor & Co. , C. M. 

Trade -Mark Act of 1905 
ii ii •• n J906 

ii ii n H 1907 

Trade-Mark Law extended to 
Canal Zone. 

United States Brewing Co. 

United States Playing ^ard Co. 
The, v. C. M. Clark Pub- 
lishing Co. 

United States Graphite Co. 
The, v. Eomhard. 

Ullman Einstein Company, The 
v. C. H. Graves & Sons. 

Ullman & Company and Gin Phos- 
phate Company v. Bluthenthal 
& Bickert. 



Vanden Bergh& Company v. Bel- 
mont Distillery Company. 

Vanden Bergh & Company v- 
Blankenheyn; & Nolet. 



Label—Shields of countries not reg.) 178 
"Sterling Mckel" descriptive — not reg.) 61 



"After the passage of the act "equivalent 
to "After the act goes into effect.) 



" ) 



"A partnership must consist of at least 



two persons 



Hip 
.") 



Label— Words "Red Hross" refused under 

Act of 1905.) 

n ii ii n it n ti 



98 
98 

122 



226 

237 



"The Ware that Wears" descriptive— not reg)61 

Mistake in applicant's name — correction. ) 18 

Class of merchandise shall "be one of the 
classes established under Sec. 2 of Act.) 196 

"Pepko" anticipated by "Pep-Kola".) 43 

Division of goods.) 15 

Interference dissolved where same person 

is real applicant for both parties.) 127 

"Purity" descriptive—not registrable.) 78 

February 20.) 90 

May 4.) 166 

March 2) 224 

225 

"Savoy" geographical— not registrable.) 197 

Interference — Mark used to indicate grade 
instead of origin or goods not a trade- 
mark.) 212 



"Raven" and "Crow" held not to 
interfere. ) 



222 



"Walnut Hill"! and "Walnut Creek" held not 

to interfere. ) ' 157 



Representation of two sprays of the juni- 
per tree, and words "Genuine Phosphate Gin" 
interfere with a valley scene and words 
"Gin Phosphate".) 209 

Gin and whisky not goods of same 

descriptive properties.) 35 

Gin and geneva held to be goods of same 
descriptive properties.) 45 










Van Eyck . 

Van Horn & Sawtell . 

Wagner & Sons, John, v. 
Thixton, Millett & Co- 

Warner v. The Searle and 
Hereth Company. 

Weil-Haskell Company v. 
Griffon Company. 

Wells Company, M. D. 

Westheimer, Samuel. 

West's Nephews. 

Westlake, Albert. 

* 

Whiting v. Leakin. 



Wliittingham v. Automatic 
Swi t ch C omp any . 

Windsor Milling and Elevator 
Company, The, v. B runner. 

Wilkinson Shear and Cutlery 
Company, The. 

Willard Chemical Company. 



Winand v. The P. J. Drury Co 

n it m 11 »i 



Winslow Skate Mfg. Co., The Sam 

Wolf Brothers and Co., The, v. 
Hamilton Brown Shoe Co. 

Wood v. Hinchman. 



Worcester Brewing Corporation 
v. P.ueter & Company. 



Wright & Taylor v.Bluthenthal 
& Bickart v. Mayer, Sons & 
Company v. Cushrnan & Company 



"Week" registrable.) 2S 

"Van Horn",asserr»iated with a ram's fore- 
head with horns—not registrable , 
salient feature being surname.) 47 

Opposition—Fee essential to date.) 153 



Jurisdiction of Federal Court—Foreign 
commerce must he shown by bill.) 29 

Mark must be republished if a mistake 

has been made in publishing it.) 128 

"Biltononna" canceled on"Honorbilt". ) 260 

Application must be limited to one class 

of merchandise.) 34 

"Black & Blue" held not to inf rinse 

"Black & White".) 178 

"Dentoza" refused on "Dr. Woodman's 
Dentozone.) 283 

A partnership must consist of at least 

two persons.) 122 

Opposition— Appeal upon Interlocutory 
Order—Pleadings* ) 145 

Interf erence— Motion to Dissolve- 
Consent of parties.) 154 

"Wilcut" descriptive— not registrable.) 259 



"Velva" anticipated by "Velvet" and 

"Velvet Skin".) 33 

Opposition must be filed within 30 days.) 152 
"Walters Virginia Glades" refused on 
"Virginia Glade". 287 

Label refused— not artistic.) 292 

Verbal transfer of trade-mark rights to 

be regarded as effective and valid.) 194 

"Satin", "Satin Skin" and "Satinette" 

held to interfere.) 52 

Int erf ere nee- -Evidence- -Irrelevant 
exhibit.) 193 

Exclusive use does not necessarily re- 
quire sole use.) 249 

"Charter Oak", "Old Charter" and 

"Royal Charter" held to interfere.) 

140 



■■ 



Yale & Towne Manufacturing r o . (Name of patented article registrable 

under ten year proviso of the Act.) 



York v. Hartman. 



("Ma-Le-Na" and "Man-A-lin" held not to 
interfere. ) 



232 

IS 8 



Young. 



Ziinmermann Company, M. 



(Representation of full length king, 
mounted on a keg, with elevated arm 
holding a glass of foaming "beverage , 
and sprays of grain and hops, refused 
on bust figure of a king, certain in- 
scription and sprajrs of grain and hops.) 

(Color must he described or lining there- 
for omitted from the drawing.) 



167 



217 



V0 X. &f./"2-J. 



Ex parte The Lion Fig and Date Company. 

Decided January 6, 1908. 
1. Labels— Descriptive Matter Necessary to Registration. 
A registrable label must be descriptive of the goods to which 
it is attached. (Ex parte Regina Music Box Company, 100' 
O. G., 1112; ex '/. arte American Wire Weavers Protective As- 
sociation, 94 O. G., 586.) 

!. Same— The "Word "Brittlenut" Used on a Label to be Ap- 
plied to Candy— Not Descriptive— Not Registrable. 
As the "words ''brittle " and " nut " when used alone with no 
r qualifying words cannot be said to describe a confection com- 
! posed of sugar, syrup, and peanuts, the single word " Brittle- 
, nut" does not describe a confection. The Jabel not indicat- 
ing in any manner that it is to be used with candy is not reg- 
istrable. 

On appeal. 

LABEL FOR CONFECTION. 

Application filed November 30, 1902, No. 3,610. 

The Lion Fig and Date Company pro se. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner refusing to register a label ■which is described 
by the.appellant as follows: 

The word "Brittlenut" printed in red ink in diagonal script, 
the first letter of which word extends from nearly top to bottom 
^f the label. In the upper qurve of said letter is placed a lion's 
head. Below the word Brittlenut and also printed in red ink in 
three lines are the words, "The Lion Fig and Date Co., Chicago, 
J 111." The entire label is printed in red ink on yellow glazed paper. 

The appellant states that the label is " to be used 
; »n a confection composed of sugar, syrup, aad pea- 
nuts."- 

The Examiner is of the opinion that the word,. 
' ' Brittlenut " is an arbitrary and fanciful word and 
that this word, in connection with the lion's head, 
is to be the applicant's trade-mark. He also states 
that ' ' the label is believed to be artistic " and that 
he has refused registration for the reason that "the 
label does not describe a confection composed of 
sugar, syrup, and peanuts." It is further stated 
by the Examiner that— 

the word "Brittlenut" is made up of two words, to wit, "brit- 
tle" and "nut" and this word probably means that tlie confec- 
tion contains some kind of a nut and that it is brittle in charac- 
ter; but it is not thought that the word in any manner describes ' 
a confection composed of sugar, syrup, and peanuts. 

The decisions ex parte Regina Music Box Com- 
pany, (100 O. Gr.j 1112,) ex parte American Wire 
Weavers Protective Association, (94 O. &., 586,) are 
cited in support of the doctrine that a registrable 
label must be descriptive of the goods to which it 
is attached. [ 

The appellant does not dispute, the soundness of 
this doctrine. He contends that the word "Brit- 
tlenut" is sufficiently descriptive of the goods to 
which the label is attached to warrant its registra- 
tion. 

The appellant states: 

First. That the word, "Brittlenut," is exactly descriptive of 
the confection to Which this name has been given, which con- 
fection is an exceedingly hard brittle taffy composed princi- 
pally of Spanish shelled peanuts held together and made a co- 
herent mass by being, cooked in a liquid composed of pure, 
melted sugar and pure glucose, which liquid when cooled be- 
comes a hard brittle mass uniting the peanuts. 

Second. A confection, somewhat similar to the one in ques- 
tion, has been on the market for some years under the name of 
" Peanut Brittle," or " New England Peanut Brittle " and a part 
of the word "Brittlenut" origipated by the undersigned has a 
standing in the confection trade. 




/ 



There can be no doubt but that the label has 
Sufficient artistic merit to warrant its registration. 
The only question,, therefore, to be determined is 
whether or not it is sufficiently descriptive of the 
goods on which it is to be placed or with which it 
is to be used. 

The words "brittle", and "nut" have of course 
a well-known meaning, but when used alone, with 
ho qualifying words, they cannot be said to de- 
scribe a confection composed of sugar, syrup, and 
peanuts. In lact, there is nothing in the tw o words 
to indicate a confection. The* word ' ' brittle " may 
be used to designate many things besides confec- 
tions, and the word "nut" when used either by 
itself or. in connection with the word brittle does 
not necessarily refer to the confection commonly 
known as "nut candy." The single word "Brittle- 
nut" therefore does not describe a confection. 

The label does not indicate in any manner that 
it is to be used with candy of any kind. 

As stated in ex parte Regina Music Box Com- 
pany, (100 O. G-., 1112:) 

The word "label" itself necessarily implies that it is descrip- 
tive of the article to which it is applied. * * * The indica- 
tion must be in the print or label itself and not merely in a state- 
ment made by the applicant accompanying it. The print or 
I label is the thing which is to be registered, and its registrability 
i must be determined by its intrinsic qualities and not by some 
I possible or contemplated use of it. 

The decision of the Examiner is affirmed. 



v. 







JL 




De Long Hook & Eye Co. v. Francis Hook & Eye Fastener Co. 

118 Fed. Rep. , 938. 



Form of cards on which the hooks are fastened, lettered hori- 
zontally between rows of hooks and eyes, cannot be appropriated 
as a trade-mark. 

"SEE THAT HUMP" arbitrary mark. 



/0&.ftf. 



/ 



'j~y~j. 



OTraaoHsopTHTB.B.oorai!. 








n t- „f the TTuited States. 
Supreme Court of tire u»" 1pH ikg 

Decided February, 1S03. 

Cbxomouthographsusedtoadv e A icture is none the less 
^protection onUecopP T ^ ect P ^^ that lt . 

a picture and none ids > 

„sed for an advertisement. MECHASlCW - Bw* 

imm ediate bodily needs. K . 

8 ' -cue copyright act refemngt the tt ^ be consid red 

4 SAUE-PICTDRES OF ACTUAL 1 

signer. , „ ^. «.„ b fect of copyright because 

Pictures are none the less the sub ect ^ & 

hot works of Uttte merit or of h - f^, designe dto 
the less educated classes but >s pun ^ „> 

be used for any other article > olman f a 
IK error to the United States Cucnit 
' Appeals for the Sixth Circuit 

jfr Aiisley Wilcox and iff. 4»«W» 
"£Stt WS- - pendant in error- 

3fe justicfc Holmes delivered the opinion of the 
C ^Laseco m esheref T t SS aSt^Cir^ 

«0 Court of Appeals for the ^^^fc, 

of error. Act of March 0. 189, o^K e ^ tlflB in 

828 . It is an action brought by the pi ^ 

error to recover the P^gjg ^ gec , 

fringements of copyrights. Revisea^ ^ 

. 4952, 4956, 4965, amended by act ^ ot Mar , 
c . 565 ,26Stat ^v^^^S consisted in the ! 
965. The alleged ™fl' n ^ n ™ ch romolitho- 
copying in reduced form ^^ stiffs for 
graphs prepared by ^P^* ^ Wallace, 
advertisements of a circus owneu uy ^ WaUaee 
E ach of th e three contained a? nl * _ c1 ; sllt re , 
in the corner and lettering bearing some 
lation to the scheme of decoration, J^ to £™" 
•subject of the design and the fact that , the reaUy 
was to be seen at the circus. One of the des gns 
was of an ordinary ballet, one of »/^* l ™S 
and women, described as the Stirk f atmlyj P^gJ 

ing on bicycles, and one of poop. «*„* 
women whitened to represent statues. ±u 

oourt air ected a verdict for the defen^t^th* 

I the protection .1 -^gSCSA^^ 

rulingwassustamedbythecircuii 

(Cotter Lithographing Co. vBonaMsoi 
graphing Co., 104 Fed. Rep., 993.) inference 

^b^^SuTSS^nt. 



make those very things. (OTB>t Un ^J a ^ y % I 
160 XJ S 426, 435; Colliery JS»fl»n«r ComP«»l^ 

Ke P ., 153; Carte v. S« WJ* .^tfefight* ; 
fairly might be found also that > the c opy JT 
were taken out in the proper name* Oneot 
was taken out in the name of th^rve 
fctay and the other two in ;the « £ was the 
SerLithographmgCompan^Theform t . on 

name of an unincorporated joint rtocK ^a 
fo rmedunderthelawsofNew|ork Law^ 

3 35, and made up of the jtoataJJ, ^J 5Q Fea . 

^Uy^therfwas evidence that the pictures 
were copyrighted \^\^™^J£ZSt 

contract with Wallace, or a more general o* asto 
-whaV'rights the plaintiffs reserved. But we caft 
Lt oa=s upon these questions as matter of law 
Zy^tlZ for the jury when the case a , tried 

of decison in the courts below, lnatgiouu 
notSd in any variance between pleading and 
proof, such as was put forward in argument, but 
in the nature and purpose of the designs 

We shall do no more than mention the sugges 
tion that painting and engraving unless for a me 
chanical end are not among the useful arts the 
progress of which Congress is em P°Tff ^^ 
Constitution to promote. The Constitution does 
Stimtt the useful to that which satisfies unme- 
dSte bodily needs. (Burrow-Giles LithograpUc , 
rovSaZy 111 U. S., 53.) It is obvious also 
&\££&W case is not affected by ? e fact 
if ii be one, that the pictures ^resmtac^ 
groups-visible things. They seem from the testa- 
mony to have been composed from hints or do- j 
scription, not from sight of a performance But 
even if they had been drawn from the life, that 
fact would not deprive them of protection, lne 
opposite proposition would mean that a portrait 
by Velasquez or Whistler was common property 
.because others might try their hand on the same 
facU Others are free to copy the original. Ihey 
are not free to copy the copy. (Bhmtv.Puttbil, 
2 Paine, 397, 400. See Kelly v. Moms, L. R. 1, fcq. 
697- Morris v. Wright, L. R. 5, Ch. 279.) The copy 
is the personal reaction of an individual upon na- 
ture. Personality always contains something 
-unique. It expresses its singularity even in hand- 
writing, and a very modest grade of art has in it 
something irreducible, which is one man's alone. 
That something he may copyright unless there is | 
a restriction in the words of the act. • 

If there is a restriction it is not to be found in 
■ the limited pretensions of these particular works. 
The least pretentious picture has more originality 
: in it than directories and the like, which may be 
copyrighted. Drone, Copyright, 153. (Hee Hen- 
derson v. Tompkins, 00 Fed. Rep., 758, 705.) The 
amount of training required for humbler efforts 
than those before us is well indicated by Ruskin. 
' If anv voung person, after being taught what is, in polite eir- 
o\ll clnld " drawing " will try to copy the commonest piece of 
realVwfc-supse^ 

air, or a woodcut in the cheapest '""^rateu newspapei or tlie 
day-they will find themselves entirely beaten. (Wemenrs «r 
Drawing, first ed.,_S.) 








\ 



There is no reason to doubt that tlieje prints in 
■ their ensemble and. in-all their details, in their de- 
sign and particular combinations of figures, lines 
and colors, are the original work of the plaintiffs' 
designer. If it be necessary, there is express testi- 
mony to that effect. 1%, would be pressing the de- 
fendant's right to the verge, if not beyond, to leave 
the question of originality to the jury upon the evi- 
dence in this case, as was done in Heg email v. 
Springer, (110 Fed. Rep., 374.) 

We assume that the construction of Revised Stat- 
utes, section 4952, allowing a copyright to the " au- 
thor, designer, or proprietor * * * of any en- 
gra%'ing, cut, print * * * [or] ehronio" is af- 
fected by the act of 1074, c. 301, sec. 3, IS Stat., TC; 
79. That section provides that "in the construc- 
tion of this act the words 'engraving,' 'cut' and 
'print' shall be applied only to pictorial illustra- 
tions or works connected with the fine arts." We, 
see no reason for taking the words "connected 
with the fine nits'' as qualifying anything except 
ilie word "works," but it would riot change our 
decision if weshould assume further that they also 
qualified "pictorial illustrations," as the defend- 
ant contends. 

These chromolithograxshs are "pictorial illustra- 
tions." The word "illustrations" does not mean 
that they must illustrate the text of a, book, and 
that the etchings of Rembrandt or Hurler's en- 
graving of the Madonna di San Sisto could not be 
protected to-day if any man were aM i to produce 
them. Again, the act however construed, does not 
mean that ordinary posters are not r-cod enough 
to be considered within its scope. The antithesis 
to "illustrations or works connected with the fine 
arts" is not works of little merit or of h ..ruble de- 
gree, or illustrations addressed to the less educated 
'classes; it is "prints or labels designca to be used 
for any other articles of manufacture." Certainly 
works are not the less connected with the fine arts 
because their pictorial quality attracts the crowd 
and therefore gives them a real use— if use means 
to increase trade and to help to make money. A 
picture is none the less a picture and none the less 
a subject of copyright that it is used for an adver- 
tisement. And if pictures 'may. be used to adver- 
i tise soap, or the theater, or monthly niaga'-ines, aa 
' they are, they may be used to advertise a circus. 
: Of course, the ballet is as legitimate a subject for 
illustration as any other. A rule" cannot be laid 
down that would excommunicate the paintings of 
iSggaifc 

Finally, the special adaptation of these pictures 
to the advertisement of the Wallace shows does 
not prevent a copyright. That may be a circum- 
stance for the jury to consider in determining the 
extent of Mr. Wallace's rights, but it is not a bar. 
Moreover, on the evidence, such prints are used by 
1 less pretentious exhibitions when those for whom 
they were prepared have given them up. 

It would be a dangerous undertaking for persons 
trained only to the law to constitute themselves 
final judges of the worth of pictorial illustrations, 
outside of the narrowest and most obvious limits. 
i At the one extreme some works of gen ius \ ould be 
sure to miss appreciation. Their very novelty 
would make them repulsive until the- public had 
learned the new language in which their author 
spoke. It may be more than doubted, for instance, 
whether the etchings of Goya or the ^Jatings of 



Manet would have bean sure ox protection when 
seen for the first time. At the other end, copy- 
right would be denied to pictures which appealed 
to a public less educated than the judge. Yet if 
they command the interest of any public, they 
have a commercial value — it would be bold to say 
that they have not an esthetic and e'dacationaj 
value— and the taste of any public is .not to be 
treated with contempt. It is an ultimate fact for 
the moment, whatever may be our hopes for a 
change. That these pictures had their worth and 
their success is sufficiently shown by the desire to 
reproduce them without regard to the plaintiffs' 
rights. (See Hendersons. Tomphins, G)Fed. Rep., 
753, 7G5.) We are of opinion that there was evi- 
dence that the plaintiffs have rights entitlejfto the 
protection of the law. 

The judgment of the circuit court of appeals is 
reversed; the judgment of the circuit court is also 
reversed and the cause remanded to that court 
with directions to set aside the verdict and grant 
a new trial. 



" DISSENTING- OPINION. 

Mr. Justice Harlan dissenting. 

Judges Lurton, Day and Severens, of the circuit 
court of appeals, concurred in affirming the judg- 
ment of the district court. Their views were thus 
expressed in an opinion delivered by Judge Lurton : 

stfted as including such a:P«V : lio ; a IL -^ u^y ot ^ oo^t uctK. 
is admissible. If r. mere label utr.".- - - .- F Bn "?£V„,semrateu 

, Constitution. Itmusib K v=.somecou^:onv.idi. ; finearts 
to give it intrinsic value, and that it sh <*•' « a 7„enaingthepro- , 

which wo attach to the act of June : ,3 - - ■■■ ;;»">- -,.„.. > ny _ 

, visions of the copyright &*?; A : ... ,'-;,, ,-., ..,, b y the- 

found merit or value as,de f ;; - the puasiy ° tol . Uie defendant 

. v^S^. s ««S«fc s ^^^S 

Already announced. The judprment must bcuiainieu. ly 
iSraS Co, v. Donojdsoai Lithographing Co., 101 
Bsp.,'003, 056.) 

I entirely concur in these views, and therefore 
, dissent from the opinion and judgment of thu 
f Court The clause of the Constitution giving Con- 
gress power to promote the progress of science 
and useful arts, by securing for limited terms to 
. authors and inventors the exclusive right to tlieu 
respective works and discoveries, does not, as i 
: think, embrace a mere advertisement of a circus. 
Mr. Justice McKbnna authorizes me to say that 
he also dissents. 





r 




COMMISSIONER'S DECISIONS. 



Ex parte The Brandsyille Fruit Farm Co 

PAKY. 

Decided January SO, 1503. J » 

I. TRADE-MARE-THE WORD « WWE "-DESCR.PTIVE-NOT RK« 

The™^- Wine " is clearly descriptive, aud it <»™°' *>™ 
a part o£ the trade-mark unless it is so mlenvcn en v, ith the 
arbU ary symbols that the removal of the descriptive word 
"vouul cause the mark to be obliterated, WparU star L„, 
iion Remedy Company, 100 O. G., 2003.) 

2. SAME-SlMOLAT.ON OF THE UNITED STATES SFHELD-NoT REO|-| 

•WhereaTimulatiou of the United Slates shield is used to 
lorm a part of a trade-mark, Beld not registrable as he ap- 
pearance is such as to impress the observer with the fact hat 
The shield and the colors of the United States are being ; use* 
for advertisement in trade. Such use of the nat >omil emble » 
and colors is against public policy and is not to be encouraged* 
(Ex parte Ball, 98 O. G., 2300.) 
8. Same -National Emblems and Colors-Descriptive^ and 
Geographical— Not Registrable. 
Where the national emblems and colors are used to f oi ma 
part of atrade-mark forthe purposeof indicating ongm, Held 
that the mark has both a geographical and a descriptive sig- 
niflcance, and tor these reasons, besides that of public policy. | 
the mark in its entirety is not registrable. 

On appeal. 

TRADE-MARK FOR WINE. 

Application filed November 3, 1902, No. 66,927. 

Mr. Rudolph W. Lotz for the applicant. 
Allen, Commissioner: 

This is an appeal from a decision of the Exam-j 
iner of Trade-Mark8.refusing to register as a trade- 1 
mark for -wine the mark which is described as fol- 
lows: , , , 

The trade-mark of this company consists of the representation 
of a shield having a blue field at its upper end in which the 
wot-ds " King Gavels'' appear in white letters. Below the blue 
field said shield N vefti&iUy striped alternately red IgdjWhttej 
and in said striped field appears the representation I a hand 
holding a bunch of grapes and a vine-leaf by the stehi tlie.vine ; , 
leaf forming a background for the grapes, said vine-leaf being 
green and the grapes purple. Across the lower end of the shield 
and over the representation of the leaf and grapes appears the 
word "Wine." 

The Examiner's action is based on two grounds- 
first, because the descriptive word " Wine" is used 
as a part of the trade-mark, and, second, because 
the arbitrary symbols and the word "Wine" are 
printed on the face of a simulation of the United 
States shield, which is against public policy. 

The word '"Wine" is clearly descriptive, and it 
cannot form a part of the trade-mark unless it is 
so interwoven with the arbitrary symbols that the" 
removal of the descriptive word would cause the 
mark to be obliterated. {Ex parte Star Lotion 
Remedy Company, 100 O. Gh, 2603.) In the present 
case the word "Wine" is not interwoven with the 
arbitrary symbols, but stands alone. If removed, 
the position and appearance of the arbitrary sym- 
bols would not be changed in the least. Applying 
the principles announced in ex parte Star Lotion 
Remedy Company, supra, it is clear that the word 
" Wine" should not form a part' of the trade'-rMrki 

The appellant has printed the arbitrary symbols 
and the word "Wine" on the face of a simulation of 
a United States shield. The shape of the shield is 
produced, the upper portion is a blue field and the 
lower portion consists of alternate red and white 
stripes or bars arranged parallel with each other 
and running perpendicularly to the field. The 
stars are omitted from the blue field; but the ap- 
pearance is such as to impress the observer with 
the fact that theshield and the colors of the United 
States are being used for advertisement in trade. 
This is the admitted purpose for which tho shield 
is' i\sed, for it is stated that the mark — 

is applied to wines and liquors of American origin only, the 
shield being used solely to indicate this, whtle at the same time 
it affords a distinctive background for the mark, rendering the 
Whole very prominent. 




Such use of the national emblems and colors is | 
against public policy and is not to be encouraged 
hv this Office {Ex parte Ball, 98 O. G., 3306.) - | 
^h stafemenlof the appellant afcove quoted J j 
dilates that the particular mark whic h itisso, ght 
to roister has both a geographical and.a desc p 
I Jo-nificance and for these reasons, besides that 
33SSS the mark in its entirety is not reg- 

18 TSdecision of the Examiner of Trade-Marks is 
affirmed. 



/03 &J &&Q 





£ 



O. 






T 



/ 



&j. ^7 ^7/ 



OOMMISSIOITEB'S DEOISK 






EX I> A It T E PAXOX. 
Deciaed March 1 

j. TRADE-MARKS-CLASS of Goods-Division. 

Trade-mark applications must bo limite.l to a single class 
t>t goods, and this means goods o£ substantially I he same d« - 
scriptive properties. 
3. Same-Division-One Tbade-JJaiik for Ose Fee 

It was the purpose of the lade-mark to that ǥ*ȣ 
taarlc should be register I for.one tee, and w xe *e»PPlica. 
tion covers more than one trade-mark division will bo re- 
quired. 

S SAHE-SaME-IdESTITY-DiFFERENT CLASSES OF GOODS. 

t , ,rUeular vmbol may be used upon different classes of 
goods without a conflict of rights, and when so used independ- 
er.t trade-mark rights are created. 

4. Same-Same-Same-Goods of Substantially the Same De- 

scriptive PROPERTIES. ; 

Where a mark is used upon two kinds o£ goods which are 
not of "substantially the same descriptive properties, the 
trade-mark right acquired is not single. 

5. Same-Scopb of Mark-Remedy fob ^rikgeuent-Goobs 

OF the Same Descriptive Properties. 
The scope of a registered trade-mark extends no further 
than the remedy provided for its infringement, and this in- 
cludes only use of the symbol upon" merchandise of substan- 
Iv the same descriptive properties." 
. ■ ■ ue-Origin of Kight-At plication to Particular Goods. 
The trade-mark right originated in the | • Ucation o a par- 
ticular mark to a particular description of goods, and the pur 
pose of the trade-mark law is to protect the use of the par- 
ticular mark in connection with the particular goods. 
7. Same-Class of Merchandise-Particular Description of 

Goods. - . ■ 

The " class of merchandise " required to be stated in the ap- 
plication is merely a description of the flcl d within which will 
be found the particular description of goods to which the 
mark has beeu appropriated. 
). Same -Commercial Classes-Identity os Extrinsic Prop. 

ERTIES. . 

Trade-mark registrations cannot cover great "commercial 
classes" of goods or classes brought together by the custom 
of commerce, but only those classiQo 1 by identity of intrinsic 
properties. 
) Same-Unfair Competition in Trade Diag*craiBHED. 

While a particular mark may be protected beyond the point 
of application to goods of substantially the same descriptive 
properties, it is neverthelessjustaUhispoint that trade-mark 
ends and unfair competition begins. 
10. Same— Same-Use for. Mars fop. Geni hal Purpose of a 
Commercial Enterprise. 
The appropriation of a particular mark for the general pur- 
pose's of a particular commercial enterprise Irrespective of 
the descriptive properties of the goods upon which it is used 
cannot bo protected as a trade-mark, but only by a court of- 
equity under the doctrine of unfair coral it'On. 
On appeal. 

TRADE-MARK Fon GROCERIES. 

Application of William H. Faxon for registra- 
tion filed August 1, 1903, No. 06,334, 

Mr. Wiliam &. Henderson for the applicant. 
Allk n, Co mmission e r: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks requiring the applicant to 
limit his application to a single class of goods. 
The present application states that the mark is 
used upon "grocers' supplies" and as a particular 
description of the goods includes "butter, eggs, 
dried beef in packages, coffee, oatmeal wafers, 
cracker - meal, butters, saltines, gems, banquets, 
grahams, sodas, ginger-snaps, teas, and ale." 

The question is whether one trade-mark regis- 
tration may include all these different goods. The 
Examiner says: 

It Is thought, therefore, that applicant should include in this 

:■ mile ition i i. h ir I i r aJ 1 1 >": ; '' alpne, 

■ me, i ■< • alone, ale alon 

: altines, gems, bar [Ui ; an 

en eki i - and cracker-mi al. 




The practice of the Patent Office upon the ques- 
tion of the goods which may be included in one 
trade-mark registration does not seem to have 
been uniform, and no clear expression of a govern- 
ing principle appears in the published decisions. 

In the case of ex 2} arte Silvers (07 O. G., 811) this 
question was presented upon an application for i 
registration of a trade-mark for grocers' drugs, 
flavoring extracts, and coffee, and Commissioner 
Seymour overruled the Examiner's requirement | 
that the application be limited to a single class of 
these goods, saying: 

Keeistration can be limited by nothing narrower than the 
actuaf and lawful use of the mark in the place where the bus.- 
ness is located. 

The case of ex parte Clarlt-Iewett-Wells Com- 
pany (83 O. G-., 915) is one where it is stated that 
the mark had been applied to groceries, and the j 
particular goods said to be included in that class 
were stated to be^ 

alarmed goods, flour, tobacco, cigars, dried frail, condiments, 
farinaceous foods, flavoring extracts, coffee, and lard, hams, 
bacon, and canned beef. 

It was urged that division should be made on 
account of the necessity of Office classification, and 
Assistant Commissioner Greeley said: 

But one trade-mark may be covered by a single registration; 
but, however desirable it may be, the C fiiee is not warranted in 
requiring that the trade-mark be registered tor but 0B6 class of 
goods. To require that a trade-mark 1 registered tor each 
class of goods with which it is used— in (ho present case tore; 
quire that the trade-mark be registered separately for live du- 
ferent classes of goods at an expense of live fees— would be a 
most onerous requirement^ , 

'" Registration was permitted to cover all of the 
enumerated classes ot goods. 

In the decision in expar-tu China & Japan Trad- 
ing Company (92 O. G., 2508) Acting Commissioner 
Chamberlin found that the applicant had— 

named in its amended statement some sixteen or more classes 
of merchandise, ranging from agricultural implements to toilet 
articles, and ninety or more particular goods, ranging from i 
lawn-mowers to crackers. In other wotos, applicant seeks to 
make one certificate of registration cover all that it is entitled 
to by virtue of its common-law rights. It bases (his action on 
the Commissioner's decision in ex parte Silvers, (07 O. G., 811.) 

In this case the Acting Commissioner stated: 
I am of the opinion that the registrati >n of so-called "depart- 
ment-store " goods in one certificate is not advisable, and in the 
absence of any direct ruling of a higher authority on the sub- 
ject I believe that it is best to confine each certificate of regis- 
tration to what may be termed commercial "classification — 
BiieHi for instance, as groceries, hardware, dry goods, etc. 

It is difficult to lay down any hard and fast rule on the sub- 
ject, and I shall not here attempt it. Suffice it to say that each 
certificate shall contain a reference to but a single class, (on 

/general commercial lines.) 
It is considered certain that the intent of Con- 
gress in the act of March 3, 1S81, was that one 
trade-mark should be registered for one fee, and 
if it shall be concluded that more than one trade- 
mark is included within one application for regis- 
tration it will be proper to require division and a 
separate fee for each mark. 

A right of trade-mark is the right to use a par- 
ticular symbol in connection with particular goods, 
and the same symbol may be used upon different 
classes of goods without a conflict of rights. There- 
fore the consideration of identity of application of 
the mark is of equal importance v.ith the identity 
of the symbol selected. 

For the purpose of determining the scope of a 
mark within the view of this statute providing for 
registration we may look to section 7 of this stat- 
ute, which provides a remedy for infringement, 
and, as pointed out in the recent decision in ex 
parte Keystone Chamois Company, (101 O. G. 
3109,) we may find in the stat< ment there of what 
bonstitutes infringement an explanation of the 
scope of the registration contemplated by the stat- 
ute. This section makes an infringer of— 






% 



.,»ny person who shall reproduce, counterfeit, copy, or eolorably 
; imitate any trade-mark registered under this act and affix the 
; same to merchandise of substantially the same descriptive prop-- 
erties as those described in the registration. 

The merchandise to be described in the registra- 
tion is stated in section 1 of this act, which requires 
to be recorded a statement specifying the class 
<Of merchandise and the particular description of 
goods comprised in such class to which the par- 
ticular trade -mark has been appropriated. As 
pointed out in the Keystone Chamois ComjjamJ 
Case, any attempt to give an appearance of breadth" 
to the trade-mark by the use of broad terms for 
the class of merchandise in the statement would be 
deceptive if it implied that it included more than 
merchandise of substantially the same descriptive 
properties, since if the right were expressed in such 
terms it would be broader than the remedy pro- 
vided by section 7 for its infringement and as to 
such excess would be a right without a remedy. 

It cannot be thought that Congress intended 
that the scope of registration acquired under the 
provisions of section 1 of this act should be differ- 
ent from the right which to be invaded by an in 1 
fringer under section 7 of the same act would re- 
quire this infringer to have applied the mark "to 
merchandise of substantially the same descriptive" 
properties as those described in the registration." 

It must be held that the class of merchandise re- 
ferred to in section 1 of this statute was intended 
as a description of the field in which would be 
found the particular description of goods to which 
the particular trade-mark has been appropriated.. 
This right originated in the application of a par" 
ticular mark to a particular description of goods, 
and the purpose of the trade-mark law is to protect 
the use of the particular mark in connection with 
the particular goods. 

Such cases as the one at present under considera- 
tion illustrate the attempt to secure the registra- 
tion of a trade-mark in such terms as to make it 
operate as a claim of right including great com- 
mercial classes of goods. By the term "commer- 
cial classes " I mean classes brought together by. 
the custom of commerce and not classified by iden-j 
tity of intrinsic properties. 

It must be apparent that precisely at this point 
is found the line of cleavage between trade-mark 
and trade-name. If the particular mark is capa- 
ble of- appropriation for the general purposes of a 
particular commercial enterprise irrespective of 
the descriptive properties or intrinsic characteris- 
tics of the goods up9h Which it is us* d, it has ceased 
just here to be a trade-mark or to fall within the 
law relating to trade-marks. Thereupon it falls 
within the adequate protection of courts of equity 
under the principles which prevent unfair compel 
tition, and that remedy is complete; but it must 
not be confounded with the remedy for infringe- 
ment of trade-marks simply because this field is 
adjacent to the field of trade-mark right. It may 
be said in general that if a particular mark may 
be protected beyond the point of application to 
goods of substantially the. same descriptive prop- 
erties upon the theory that a deception might be 
practiced by its use to divert a good-will intended 
for one manufacturer to the profit of another it is 
nevertheless j ust at this point that trade-mark ends 
and unfair competition begins. 



* 



l/ 






In the present case there is no possible construc- 
tion of the term "class of merchandise" which 
could cover so wide a range of particular goods as 
are sought to be here included in one registration 
The term chosen, "grocers' supplies, "may even be 
construed to include things beyond those enumer- 
ated. The evident intention of this applicant is to 
cover all subjects of commerce of all the various 
descriptive properties which may be brought to- 
gether within one grocer's commercial establish- 
ment whereby the commercial good-will of this 
establishment maybe protected, not in relation to 
any particular class of goods, but in relation to all 
classes of goods which may be the subject of his 
traffic. If this can be accomplished, he will have 
secured under a trade-mark registration the use of 
a particular mark for general purposes in com- 
merce covering an almost endless variety of goods. 
Not denying that under certain conditions such 
rights might arise and be enforceable, it must be 
denied that any such effect can be ascribed to a 
single trade-mark, because it at once makes of no 
effect the requirement that a trade-mark shall be 
created by appropriation of a mark to designate 
origin of particular goods. Such a result would 
be to withdraw this emblem from uss generally for 
commercial purposes and not to withdraw it for 
the purposes of its use upon particular goods. 

K it should be concluded that this statute pro- 
viding for Federal registration of trade-marks is 
any narrower in its statement of what constitutes in- 
fringement than the common law, then it must be 
concluded that for the purpose of such registration 
the common-law right has been limited by the stat- 
ute, and for the purposes of the registration the 
terms of the statute must be complied with. 

The language used in section 7 of this act bases 
identity of application upon the only fixed and 
permanent characteristic available as a test of 
identity— that is, upon intrinsie\properties— and to 
leave this firm foundation of principle and to base 
identity of application of the symbol upon the ac- 
cidental relations of commerce is to substitute an 
indefinite or temporary external relation for per- 
manent characteristics. No considerations of ex- 
pediency or convenience can weigh against princi- 
ple in this matter. - . — -. 

The action of the Examiner is affirmed. 






/OJ, O.f.y^ y 



COMMISSIONER'S DECISIONS. 



EX PARTE EUPEPTOL MEDICINE COMPANY. 
Decided March 6, 190S. 
Label— Ordinary Printing— Lacking in Artistic Merit. 

A label consisting of ordinary printed matter, printed in or-, 
dinary type, describing the uses and price of the article and 
; containing no artistic merit, Held not registrable. 

On appeal. 

LABEL FOR TONIC. 

Application for registration filed January 31, 1901, 
No. 3,880. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner in refusing to register a label for medicine en- 
titled "Eupeptol" on the ground that it is not an 
artistic or intellectual production. 

The label consists of ordinary printed matter, 
printed in ordinary tj'pe, describing the uses and 
price of the medicine. Its style or dress is nothing 
more than what would be produced by any type- 
setter if requested to print the descriptive matter 
which it contains. Such merely descriptive labels 
are not registrable under the law. As said by the 
Supreme Court in Higgins v. Kevffel (08 0. Or., 1139) 
in reference to this law: 

It does not have any reference to labels which simply desig- 
nate or describe the articles to which they are attached, and 
which have no value separate from the articles, and no possible 
influence upon science or the useful arts. 

The decision of the Examiner is affirmed* 





7 



I7NITRT) STATES PATENT OPPICE. 




n 



Ex parte Continental Packing Ho,, 
MS. D., Vol. 76, p. 139. 

TRADE-RARE. 



Application of Continental Packing Co., Serial No. 67,157, filed 
December 5, 1902. 

On appeal from the action of the examiner in refusing to register 
the mark claimed as applied to lard, hams and "bacon, for the reason 
that lard was goods of different descriptive properties than hams 
and "bacon, the Commissioner held as follows: 

"Hams and "bacon do not constitute merchandise of substantially 
the same descriptive properties as lard, and therefore the examiner 
properly required that the application "be limited. Ex parte Paxon, 
103 0. G., 891. 

"The decision of the examiner is affirmed. 






(Signed) P. I. Allen 

Commissioner. 



March 26, 1903. 













*— «> 



■a). 



«r 



COMMISSIONER'S DECISIONS. 



Ex parte Madison Medicine Company. 

Decided March 3h 190S. 

1. Tiude- Mark-Surname Qualified by Portrait— Registra- 

ble. 
The trade-mark for medicine which consists of the words 
"Hollistcr's Rocky Mountain, "qualified by the associated por- 
trait of A. H. Hollister, held to be registrable. 

2. Same— Same— Not a General Use— Exclusive and Arbitrary 

as the Autograph-Signature- 
Where a surname is associated with a portrait of a person 
bearing that name, the surname is not used in a general way 
and open to the use of all other persons of that name, but its 
use is confined to the particular person designated by means 
of the associated portrait. The name so used is as exclusive 
and arbitrary as the autograph-signature of that person. 

On appeal. 

trade-mark for medicine. 

Application filed July 12, 1902, No. 66,107. 

Mr. William Q. Ifend-ers^n for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Ex- 
aminer of Trade-Marks refusing to register as a 
trade-mark for medicine the mark which is de- 
scribed by the appellant as follows: 

As shown in the accompanying facsimile, the trade-mark con- 
sists of the words, " Hollister's Rocky Mountain," qualified by , 
the associated portrait of 'A. H. Hollister. 

The application for registration is made by the, 
Madison Medicine Company, by A. H. Hollister, its 
secretary. This fact indicates that the Madison, 
Medicine Company has the permission of A. H. 
Hollister to use his portrait on its trade-mark. 
The Examiner says in his statement: 
To the words " Rocky Mountain " and the portrait of. A, H, 
Hollister, no objection is raised. Registration of the name 
" Hollister's," however, has been refused for the reason that if 
Is an ordinary surname in the possessive, and also the name of i 
an officer of the corporation. 

The appellant admits that a mere surname is 
not registrable as a trade-mark, but it is contended . 
that the surname in this case — 

* * * is peculiarly characterized by the portrait of the per-, 
son whose name is used, and with the consent of that person as 
evidenced by the fact of his signature to the papers for regis- 
tration of the trade-mark * * * and the name with the por- . 
trait of the person whose name is used thus becomes an arbi. 
trary and fanciful designation for this particular make of goods. 

It is further contended by the appellant that — 

the portrait Indicates the particular person whose name is used 
and the name indicates the' person whose portrait appears, 
and the two together prevent the possibility of confusion in 
the public mind as to the origin of the goods bearing such 
name when it is distinguished from all other similar surnames 
by the distinguishing characteristics' of. this particular mark 
which is the name associated with the 'portrait of ''the person 
whose name is used. The case is therefore similar' 'to those 
cases in all of which the facsimile-signature has been held to be 
a lawful trade-mark. 

The principles, announced in ex parte Mark 
Cross Co, (102 O. G., 622) are applicable to the case, 
under consideration. As stated in that case: 

The controlling principle in cases of this sort is the principle 
arising in cases of autograph-signatures. These are considered 
as registrable, although the mere names would not be regis- 
trable, because the. special characteristics of the iiabie as set 
forth so far outweigh the mere name upon which it is founded 
that the name thus expressed or modified amounts to ah arbi- 
trary mark. 

It set ras clear that in addition to autograph-signatures there 
may be other modes of setting forth names by which such pe- 
culiarity is added to the mere name as to bring the name thus 
expressed or modified within the principles which render auto- 
graph-signatures capable of exclusive appropriation to an m- 
i!i r idual. In any such case, however, the peculiarities of the 
expression of the name must so far transcend the mere name 
chosen that t^ese peculiarities, and not the name, become the 
significant and striking elements which affect the mind when 
the mark is considered. ' * 

The peculiarities must dominate the mere name and reduce 
it to a position (if relative obscurity. 

Where a surname is associated with a portrait 
of a person hearing that iiame, the surname is not 
used in a general way and open to the use of all 
other persons of that name, but its use is confined 
to the particular person designated by means of 
the associated portrait. The surname so used is 
as exclusive and arbitrary as the autograph-signa^ 
ture of that person. 

It follows from this conclusion that the trade- 
mark in its entirety is registrable, and the deci- 
sion ol tea Examiuerof IVaiVMnrks refusing regis- 
tration is accordingly reversed. 



^ 



^ 



COMMISSIONER'S DECISIONS. 



Ex p lkte Cobb. 

Decided March 10, 190S. 
Trade-Marks— Applicant's Surname-Salient Feature. 

The word " Cobb's " extending across a pair of crossed corn- 
cobs II. hi not iv: a trademark, since the salient 
feature of the mark is the applicaws surname. 
On appeal. 

trade-mark FOR BAKING-SODA, ETC. 

Application of Lawrence Cobb for registration 
filed September 20, 1002, No. 66,011. 

Messrs. Davis & Davio for the applicant 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade -Marks refusing to register "the 
word 'Cobb's' extending across a pair of crossed 
corncobs " as a trade-mark for "baking materials, 
laundry compounds, condiments, and polishing 
compounds," the particnjM goods being described 
as "baking-soda, bluing, both liquid and solid, 
pepper, and stove-polish, Loth liquid and solid." 

The word "Cobb's" is a salient feature of the 
mark presented, and it consists of the applicant's 
surname used in the possessive. ■ The mark as pre- 
sented is therefore not registrable under the prin- 
ciples announced in ex parte Tabor, (96 O. G. 
1030.) 

The Examiner says that the crossed corncobs ! 
would be registrable if presented alone, but that- 
tin- Examiner is of the opinion that applicant has not disclosed 
a sygle class i £ merchandise, but four different classes, to wit 
baking materials, laundry compounds, condiments, and polish- 
ing compounds. ' 

The Examiner is right in this conclusion for the I 
reasons fully stated in ex parte Faxon, decided 
March 19, 19 3D. 

Even if the mark were registrable, therefore, a. 
single regft rati ax could cover only one of the 
classes of goods now mentioned. 

The decision of the Examiner of Trade-Marks is 
affirmed. 



/62. 





/0J. 




J-f7 



COMMISSIONER'S DECISIONS. 



Sibley Soap Company •». Lambert Pharmacal 
Company. 

Decided March JO, 1903. 

1. Trade-Mark— Interference— Right to Make Claim. 

No appeal lies from a decision of the Examiner of Trade- 
Marks holding that a party is Entitled to the registration of a 
trade-mark. 

2. Same— Same— Irregularity in the Declaration. 

"Where one of the parties has registered the mark of the 
• issue and his application sets out a certain date of adoption 
and use, which date is subsequent to that set out hy his oppo- 
nent, and such party has pending a generic application for 
the same mark alleging a date of adoption and use anterior 
to the date of his opponent, hut such application does not men- 
tion the particular goods to which the mark of the issue is 
applied, Held there was no irregularity in failing to include 
the generic application of the interference. 

3. Same— Same— Priority— Testimony. 

A party to a trade-mark interference is not restricted to 
the date of adoption and use set up in the application or reg- 
istered mark directly included in the interference, hut he 
may introduce testimony to show a date of adoption and use. 
prior thereto. 

Appeal on motion. 

TRADE-MARK eor soaps. 

Application for trade-mark of Sibley Soap Com- 
: pany filed July 21, 1902, No. 66,255. Trade-mark 
of Lambert Pharmacal Company registered June 
24, 1902, No. 38,511. 

Messrs. Raymond & Barnett for Sibley Soap 
Company. 

Messrs. Knight Brothers for Lambert Pharma- 
cal Company. 
Allen, Commissioner: 

This is an appeal by the Lambert Pharmacal 
Company from the decision of the Examiner of 
Trade-Marks denying a motion brought by the 
Lambert Pharmacal Company to dissolve |he 
above-entitled interference. 

The trade-mark in issue is: 

The word " Listerine " for toilet soap. 

The Lambert Pharmacal Company registered 
this word for use on toilet soap June 24, 1902. 

The motion for dissolution was based on the fol- 
lowing grounds: 

That there has been such irregularity in declaring this inter- 
ference as would preclude a proper determination of the ques- 
tion of priority; that the said Sibley Soap Co. has no right to 
make the claim for registration of the trade-mark in question. 

The Examiner denied the motion to dissolve on 
both grounds and fixed a limit of appeal from his 
decision denying the motion on. the first ground 
only. 

Extensive briefs were submitted by both parties 
bearing on the question of the right of the Sibley 
Soap Company to the use of the word " Listerine " 
i on toilet soap independently of the question of pri- 
ority. 

The Lambert Pharmacal Company contended 
that the word "Listerine" as used by the Sibley 
Soap Company was either descriptive or deceptive 
and in either aspect was not registrable. The Ex- 
aminer held, in substance, that the word "Lister- 
ine" was at one time arbitrary in character, and 
therefore properly registrable, and that it did not 
appear from any facts of which he might take ju- 
dicial notice that the word ' ' Listerine " had ceased 
to be arbitrary or had become descriptive at the 
date of its adoption and use by the Sibley Soap 
Company on toilet soap January 1, 1895-. He held, 
therefore, that the Sibley Soap Company had a 
right to claim the use of the word "Listerine " as 
applied to toilet soap. In accordance with the 



well-established practice no appeal lies from a de- 
cision of the Examiner of Trade-Marks adjudging 
that a party is entitled, to the registration of a 
trade-mark. 

The decision on this appeal therefore will be con- 
fined to the question of the alleged irregularity in 
the declaration of the interference. This irregu- 
larity is stated by the Lambert Pharmacal Com- 
pany to be the failure of the Examiner to include 
in the interference another application filed by it 
on November 14, 1902, No. 67,013, in which appli- 
cation it aimed to cover the word " Listerine " as 
applied to "toilet preparations." 

The Examiner of Trade-Marks wrote a letter in 
connection with tbds application on December 4, 
1902, wherein he st ated: 

Further action on the application is suspended, in view of the 
interference in which a] >plicant's companion application is in, 
volved, and. in this eonne otion it may he noted that the goods iu 
this application cover thu goods involved in said interference. 

It was this letter -which led the Lambert Phar- 
macal Company to conclude that the application 
No. 67,013 should have heen included in this inter- 
ference. < 

In a subsequent letter, however, written after 
this case was argued 0:1 the appeal from the Ex- 
aminer's decision on the motion to dissolve, the 
Examiner states: ■ 

It is thought that the statemc mt of particular goods should be 
revised, in the interest of clearness, to definitely set forth pre- 
cisely for what goods applicant seeks to register the word " Lis- 
terine" in the matter of this application. * * * If this prepa- 
ration is prepared in liquid f orr i, there is no objection to regis- 
tration, as at present advised, but it should be so stated in the 
particular description of goods. If. however, it is prepai ed in 
different forms, .the various forras should be set forth, and this 
pertains particularly to the question of whether or not it is in 
the form of a soap. Therefore, if applicant will revise the par- 
ticular description of goods to clearly set forth upon what par- 
ticular goods the mark is nsed, further consideration will be 
given the application. 

The evident purport of this letter is to have the 
Lambert Pharmacal Company designate with more 
particularity the character of the goods which 
they contemplate including under the expression 
"toilet articles." 

In view of the facts that this application, No. 
67,013, does not specifically mention toilet soap as. 
one of the articles on which it is proposed to use 
the word "Listerine" and that the applicant has. 
previously registered the word for this particular 
purpose it is not seen wherein any irregularity ex- 
ists by not including such application in this in- 
terference. 

Even assuming, however, that this application 
did specifically mention, among other artiel es, toilet 
soap it is still doubtful if the failure of the Exam, 
iner to include it in this interference would be a 
proper basis for dissolving the interference on the 
ground of irregularity, since the irregularity con- 
templated by the rules is only such irregularity — 
as will preclude a proper determination of the question of 
priority. (Rule 132.) 

A party to a trade-mark interference is not re- 
stricted to the date of adoption and use set up in 
the application or registered mark directly in- 
cluded in the interference; but he may introduce 
testimony to show a date of adoption and use prior 
thereto. (Sherwood v. Eorton & Co., 84 O. G., 2018; 
Broderiek andBascom Rope Co. v. Leschen & Sons 
Rope Co., 100 O. G-., 3011.) Hence it is not seen that 
the failure of the Examiner to include application 
No. 07,013 in this interference can in any way affect 
the question of priority. 

It must be held, therefore, that there has been 
no irregularity in the declaration of this interfer- 
ence, and the decision appealed from is accordingly 
.affirmed. 



# 



f 







/ 



OOMMISSIONEK'S DECISIONS. 






In re Dietz. 

Decided April 9S, 1003. 

1. Trade-Makes— Protest against Registration— Prior Use 

by Stranger to Record. 
Where a protest is filed against the registration of a trade- 
mark to an applicant on the ground that it was first used by 
some other party and it is requested that proceedings be in- 
stituted so that the tacts may be established by competent 
evidence, Held that the protest will be dismissed. 

2. Same— Poblic-Use Proceedings. 

The Office will not institute proceedings in the case of trade- 
marks analogous to public-use proceedings in the case of 
patents, since public use does not raise any question as to the 
right of the public, but merely the right of some other alleged 
user. 

In the matter of the protest of Conrad Dietz 
against the issue of trade-mark to the Horton Man- 
ufacturing Company. 
Allen, Commissioner: 

This is a protest by one Conrad Dietz against 
the registration of a trade-mark by the Horton 
Manufacturing Company. 

Dietz was involved in an interference with the 
Htorton Manufacturing Company and was defeated 
in that proceedi ng. He now alleges that the mark 
-v&s used by sbinfe other party prior to its adoption 
by the Horton Manufacturing Company and that 
the company is therefore not the lawful owner of 
the mark. He offers to produce evidence of this 
fact and asks that he be given an opportunity to 
do so. The law makes no provision for the insti- 
tution of proceedings of the kind requested, and 
it is believed that they would not be justified by 
analogy to public-use proceedings in the case of 
applications for patents. 

Inventions become public property by two years' 
public use before application for patent, and as 
the representative of the public it is the duty of 
this Office to determine whether or not a particu- 
lar invention has passed into its possession. The 
Office acts in the interest of the public and refuses 
to give a patent to an individual for what already 
belongs to the public. 

In the case of trade-marks any amount of pub- 
lic use does not give the mark to the public. Some 
person has the exclusive right to use the trade- 
mark, whether it is the applicant for registration 
or the party referred to by the protestant. The 
rights of the public are in no way involved. It is 
merely a question which of the two parties is en- 
titled to the mark. If the party referred to by the 
protestant files an application for registration, it 
may become necessary for the Office to declare an 
interference in order to determine which party is 
entitled to registration; but until he does so the 
Office is not called upon to investigate his rights. 
The Office is open to him, and he may assert and 
protect his rights in the regular way by filing an 
application for registration. 

The protest is dismissed. 




'/Jjf Af. fd'z- 



COMMISSIONERS DECISIONS. 



Ex parte Chicago Fire Proof Covering 
Company. 

Decided April 13, 1003. 
Trade-Mark—" Vitrified "—Descriptive or Deceptive; 

"Vitrified " as applied to asbestos held to be either descrip- 
tive or deceptive and not registrable as a trade-mark. 

On appeal. 

TRADE-MARK FOR ASBESTOS. 

Application filed September 18, 1902, No. 66,598. 

f7jij £ f 'j " •Vi*'*S>t Hilf run ■) i'ii 1 1 'fimiw^ n 1 1 1 i 
Allen, Commissioner: 

This is an appeal from a decision of the Examiner 
of Trade-Marks refusing to register the word ' ' Vit- 
rified " as a trade-mark for asbestos. 

The Examiner holds that the word is either de- 
scriptive or deceptive and in either case is not reg" 
istrable. The applicant contends that the asbestos 
he deals in is not, in fact, vitrified, nor can asbestos 
be vitrified in the sense in which this term is ordi- 
narily employed and that his use of the word is ar- 
bitrary and fanciful. 

Ordinarily a product is referred to as vitrified if 
it possesses some of the characteristics or proper- 
ties of glass. Thus we have vitrified brick, which 
is brick having a fused or glassy surface. 

In view of the facts that asbestos is commonly 
employed in the manufacture of various fireproof 
articles and other materials and that the word ' ' vit- 
rified" is commonly associated with some, if not 
all, of these articles, it is believed that the word as 
applied to asbestos conveys the impression that the 
asbestos has been so treated as to give it vitrified 
characteristics. In this view of the case the word 
is descriptive. If, as appellant states, his product 
has no properties which would justify designating 
it as "vitrified," then his use of the word is mis- 
leading or deceptive. 

The decision of the Examiner of Trade-Marks is 
affirmed. 




/6tf£f./"f 

COMMISSIONER'S DECISIONS, tflr 



EX PARTE ABENDROTH BROTHERS. 

Decided April 21, 1S0S. 
1kade-Map.es-" York "-Geographical Word. 
thll W ° rd " Y ° rk " re£used registration as a trade-mark for 
wra reason that its primary significance is geographical. 

On appeal. 

TRADE-MARK FOR STOVES, RANGES, FURNACES, ETC 

i^fSSISif 01 registratioa flled f™ y «, 

Mr. Harold Sen-ell for the applicants. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
ine, -of Trade-Marks refusing to register tlie w "d 

lork as a trade-mark for stoves and ranges. 

name" Ttf °^ "^ welUm °™ geographical 
name Its primary significance is geographical 
and it is believed that it would not £ nndTrstoS 
by the purchasing public _as being arbitrary and 
fanciful when applied to an article of manufacture 
In view of the well-known meaning of the word 
it is not necessary to consider whether any place 
known by that name is celebrated for the manu- 
facture of stoves and ranges. 

affirmed 60 ^ 011 ° f ^ Examiner of Trade-Marks is 



/o//. tp. *<^? 



COMMISSIONER'S DECISIONS. 




\ 

Ex parte The James Graham Manufactur- 
ing Company. 

Decided May IB, 1903. 
Trade-Mares—" Wedgewood "—Surname. 

The word " Wedgewood " refused registration as a trade- 
mark, since it js a common and well-known surname, 

On appeal. 

trade-mark for stoves, ranges, etc. 

Application for registration' filed February 2, 
1903, No. 67,548. 

Mr. Francis M. Wright for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Ex- 
aminer of Trade-Marks refusing to register the 
word "Wedgewood" as a trade-mark for stoves. 

The word "Wedgewood" is a common and well- 
known surname and is not registrable as a trade- 
mark. It has been associated with a particular 
kind of pottery originated by Josiah Wedgewood, 
and it is probable that its use for that purpose 
would be protected on the ground of unfair com- 
petition in trade, (Browne on Trade-Marks, sec. 
210;) but it is nevertheless not a technical trade- 
mark. 

The decision of the Examiner of Trade-Marks is 
affirmed. 



COMMISSIONER'S DECISIONS. 
Ex parte Bissell Carpet Sweeper Company. 

Decided May 15, 1908. 
Trade-Marks— " Cyco Gold Medal"— Descriptive Words. 
The words " Cyco Gold Medal" refused registration, since 
" Cyco" has been registered, and the addition of the descrip? 
tive words " Gold Medal " does not make a new trade-mark. 

On appeal. 

TRADE-MARK FOR CARPET-SWEEPERSi. 

Application for registration, filed April 21, 1,903, 
No, 05,007. 

Mr. Edward Taggart and Mr. James L. Norris 
for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the words 
" Cyco Gold Medal " for carpet-sweepers. 

The word " Cyco " alone has been registered to 
the applicant, and it is clear that the addition of 
the descriptive words "Gold Medal " does not make 
a now trade-mark. The words are not changed in, 
meaning by association wrth the arbitrary symbol 
."Cyco." The Words and symbol have the same 
significance whether used together or separately, 
and therefore the registrability of the mark must 
be determined by the added words " Gold Medal." 
' The court of appeals of New York said in regard 
to these words in the case of Taylor v. Qillies (59 
j N. Y., 331) that they— 

do not indicate ownership or origin, but quality, and that in 
, some competitive exhibition a gold medal has been awarded 

to the article for its excellence, and so they cannot be approm-i- ' 
I ated as a trade-mark. r 

|> It was further said: 

It can scarcely need.to beadded that if the law does not allow 
one to whom a gold medal has been awarded for the excellence 
of his product to use that phrase as a trade-mark it much more 
will not protect the exclusive use of the phrase where the foun- 
dation of fact is wanting. 

i, ., 

£he Examiner properly refused to register the 
| wprds, and his decision is affirmed. 







COMMISSIONER'S ' DECISIONS- 
Ex parte Bissell Carpet Sweeper Com 

Decided May IS, 190S. 
Trade -Marks — "Cyco Prize"— Arbitrary and Descriptive 
Words, 
The words "Cyco Prize" refused registration as a trade- 
mark, since "Cyco" has been registered, and the added de- 
scriptive word "Prize" does not qualify or change the mean- 
ing of the arbitrary symbol. 

On appeal. 

TRADE-MARK FOR CARPET-SWEEPERS. 

Application for registration filed April 21, 1902, 
No. 05,000. 

Mr. Eduiar'd Taggart and Mr. James L. Norris 
for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Ex- 
aminer of Trade -Marks refusing to register the 
words "Cyco Prize "as a trade-mark for carpet- 
sweepers. 

The word "Cyco" has been registered to the ap- 
plicant, and the word "Prize" is clearly descrip- 
tive. Theword "Prize" doesnotqualifyorchange 
the meaning of the arbitrary symbol "Cyco "and 
has itself the same meaning as if used alone. Tho 
use of a descriptive word upon the same article 
upon which an arbitrary trade-mark is used does 
not have the effect of producing a new trade-mark. 

The decision of the Examiner refusing registra- 
tion is affirmed. 



f<fs 



MM ^f ^^V^ 



\/\ps COMMISSIONER'S DECISIONS 




a 



Ex parte Tite Modoc Soap Company. 

Decided Hay 10, 1903. 
1 Trade-Marks-" Mo..oc "-Name of Indian Tribe. 

The word -'Modoc" associated with a picture of an Indian 
r refused registration as a trade-mark, since it is the name of an . 
Indian tribe. 
Same-Name of Indian TniDE Not Registrable. 

Since the law is intended to regulate trade with the Indian 
tribes, the name of a particular tribe cannot properly be reg- 
istered as a trade-mark. 

On appeal. 

TRADE-MARK FOR CLEANSIK.Q AGENTS. 

Application for registration Med December 98, 
1897, No. .",4,805. if 

Mr. Win. IT. Fisher and Mr* Samuel T. Fisher 
for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register a mark, 
•which is described as follows: 

The trade-mark of tne said company consists of the represen- 
tation the head of an Indian, and the words 'Modoc Liouid 
Oar Gleaner " In displaying this Indian head in such trade- 
rarkftthK been usual to display it as shown in the accompany 
tag drawing, namely, an Indian Head provided with a skull-cap 
a id leathers- all of these from the shoulders up have been in- 
closed wMi a curved line, and to present the same n the copper 
color wl. cb characterizes an Indian. But the various accessor 
r?e? of tl epic ' uremav be varied at pleasure, or altogether omit- 
ted without altering the character of the trade-mark, the essen- 
tial features of which are the Indian head and the words Mo- 
doc Liquid Car Cleaner." 

This statement and the facsimile have been ob- 
j ected to by the Examiner, and the applicant has 
a greed to avoid the objection by amendment. The 
only question at issue is whether the word " Mo- 
doc " is registrable as a trade-mark in connection 
with the picture of an Indian. 

The word " Modoc" is the name of a county in 
California and is also the name of an Indian tribe. 
It is believed that when associated with the pic- 
ture pf ijtnirifliau it, would not have a geographical,! 
significance to the ordinary purchaser, butl would 
be understood as describing the Indian. In other 
words, it would mean a Modoc Indian. 

The trade-mark law provides for the registration ■■ 
of marks used in trade with foreign nations or the 
Indian tribes, and therefore to register the mark 
here presented would be to register the name of- 
orie of the parties between which the trade is be- 
ing regulated. The Modoc Indian tribe is neces- 
sarily one of those included in the statute in gen- 
eral terms. It would obviously not be proper to 
register the name of the people of a foreign coun- 
try as a trade-mark, and for the same reason it is 
not pr : per to register the name of an Indian tribe, 
dseisiou of the Examiner of Trade-Marks is 
affix] 




COMMISSIONERS DECISIONS, 



EX PARTE TALLMADGEK 

Decided May rfl, 1003. 

1. Trade-Marks— Division of Application— Different Classes 
of Goods. 
Held that a single trade-mark registration cannot be per''' 
mitted to cover the great number of different articles men- 
tioned in this case merely because they are all made in whole 
or in part of rubber and are made and sold by one company, 
if. Same— Same— Goods of the Same Descriptive Properties:* 
The question whether goods are of substantially the same ' 
descriptive properties and may be covered by one registration 
depends not merely upon the substance of which they are 
made, but also upon the character and use of the articles. 

On appeal. 

TRADE-MABK FOR RUBBER GOODS. 

Application of John J. Tallmadge filed Decem- 
ber 34, 1903, No. 67,394. 

Mr. E. <?. Siggers for the applicant. 
Allen, Commissioner: 

T?his is an appeal from the decision of the Exam- 
iner of Trade-Marks requiring the applicant to re- 
strict this application to goods of substantially the 
same descriptive properties. 

The mark consists of the word "Banner," and 
the goods to which it is applied are described as 
follows: 

Abdominal supporters, aprons, athletic goods, atomizers, 
balls, bandages, Dags, bands, baptismal pants, brushes, bath- 
tubs, bathing-caps, bed-pans, bed-sheets, belting, blankets, 
boots, breast-pumps, buggy-aprons, bulbs, caps, catheters, 
chamber-cover collars, cups, [cushions, combs, cravenettes, 
crude rubber, cement, chair arid crutch tips, coats, Wapers, 
dental dams, dolls, drill-tubes, elastic stockings, exercisers, fin- 
ger -cots, foot-balls, fruit-jar rings, fuller-balls, force-pumps, 
gaskets, German socks, gossamer-cloth, hats, hat-covers, head- 
coils, horse-covers, heels, hose, hospital supplies, hot-water 
ba^s. invalid cushions and' rings, lacp leather and cutters, lawn- 
sprinklers, leggings, life-preserverS", mackintoshes, mats and 
matting, mittens, massage-rollers, match-safes, mattresses-, 
medicine-droppers, mending-tissues, mirrors, oil clothing, op-" 
erating-cushions, overshoes, packing, pillows, plant-sprays, 
printers* outfits, pump-valves, pouches, printers' blankets, 
pails, pessaries, pistols, rubber-head screws, rattles, rocker- 
tips, rubber cloth, rings, sheetings, slickers, socks, shower- 
baths, sleeves, soles, stopples, stair-treads, suspansories, shoes, 
spittoons, stomach -tubes, syringes, taeks, tank-pumps, toys, 
tumblers, thresher-belts, throat-bags, tires, truss-webbing, tub- 
ing, urinals, valves, water bags and bottles, wagon-bumpers, 
webbing, wagon-covers, washers, window-cleaners, all of said 
goods being made wholly or partly of rubber. 

All of these goods are said to bs made wholly 
or in part of rubber, and therefore it is contended 
that they are of substantially the same descriptive 
properties and should, under the ruling in ex parte 
Faxon, (103 O. Or., 891,) be permitted to be retained 
in one application. 

The question whether goods are of substantially 
the same descriptive properties depends not merely 
upon the substance of which they are made, but 
also upon the character and use of the articles 
themselves. For instance, bath-tubs and dolls can- 
not be said to be of the same descriptive proper- 
ties because made of the same material. The use 
of a particular mark upon one would certainly 
not infringe the right to use it upon the other. 

The appellant has filed a catalogue indicating 
that all of the goods mentioned by him aremade and . 
sold by one company; but that fact is not of con- 
sequence. It shows that the appellant is attempt- 
ing to register his trade-name for all goods sold by 
him and not his trade-mark for particular goods. 
The large department stores sell goods of almost 
all descriptions, including goods having no simi- 
larity of any kind. 






A 



The ruling of the Examiner that the description 
should bo amended and limited to a single class 
of goods is right and must be sustained. 

The appellant says that the Examiner has not 
pointed out -what gcods may be retained in one 
case; but this appeal does not relate to that mat- 
ter. It is -very clear that all of them should not 
be retained, and that is-the enly matter now pre- 
sented for decision. The applicant and the Ex- 
aminer sUcc'.d hare no trouble iu reaching an 
agreanient npon the specific lines in view of the 
above ruling and the principles announced in ex 
parte Faxou^supra. 

The Examiner has aleo objected to the term 
"athletic goods'' as being indefinite. This objec- 
tion is well taken. 

The decision of the Examiner of Trade Marks is 
affirmed. ' 




/d $: &j. / j~3 



COMMISSIONER'S DECISIONS." 



Ex parte William Schotten & Companx..- 

Decided June 15, 1903. 

Appeal from Examiner of Trade-Marks. 

trade-mark for coffee. 
Trade-Marks— "1904" for Coffee — Descriptive. 

The number " 1904 " refused registration as a trade-mark ror" 
coflee, since it indicates when the coffee was grown and is de- 
scriptive. 

Application for registration filed November 25, 
1902, No. 67,101. 

Mr. F. G. Siggers for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the num- 
ber "1904" as a trade -mark for coffee on the 
ground that it is descriptive and incapable of ex~ 
elusive appropriation. 

The number -when used upon coffee which is 
grown and gathered each year would be under- 
stood by the purchasing public as indicating that 
the particular coffee to which it is applied was 
gathered in the year 1904. It is therefore descrip^ 
tive and may be used by any one to mark coffee 
gathered in 1904. 

It is said that there is no particular virtue in 
coffee grown during one year over that grown an- 
other year, and that therefore the statement of 
the year is not descriptive of the coffee. It is, 
however, descriptive of the age of the coffee, which 
may be taken to indicate to a certain extent its 
characteristics. For instance, corn and wheat are 
sold in the market at prices varying according to 
the year in which they are grown. The age de- 
termines the characteristics and the value of the 
article. 

The decision of the Examiner of Trade-Marks is 
affirmed. 



/<t<*.f!f#<? 



COMMISSIONEE'S DECISIONS. 




Ex parte W. B. Belknap & Co. 



Decided May SS, 1903. 
Trade-Marks— " Nitro-Hc/nter " Anticipated dt " Nitro." 
"Nitro-Hunter" refused registration as a trade-niark for 
firearms in view of a registered mark for the same goods in- 
cluding the word "Nitro." The addition of the proper name 
" Hunter" does not make a new mark. 



On appeal. 

TRADE-MARK FOR FIREARMS. 

Application filed April 27, 1903, No. 68,157. 

Mr. Lafon Allen for the applicants. 
&.llen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the com- 
pound word "Nitro-Hunter" as a trade-mark for 
firearms. 

The Examiner refused registration because of 
the registered mark of The Hunter Arm Com- 
pany, No. 32,348, January 10, 1893. This mark is 
described as consisting of the— 

* * * word "Nitro" and the representation of a human 
arm with the zigzag lightning darting from the closed hand 
thereof. 

The arbitrary word "Nitro" is common to both 
marks. In considering the identity of two trade- 
marks the sound of the words used therein when 
spoken is as important as the appearance of the 
marks. As stated in the ease of ex parte Vogel 
and Son, (99 O. &., 2321:) 

Both senses are to be used in determining the question 
whether or not one mark so nearly resembles the other as to 
have the tendency to mislead and to cause confusion in the 
minds of the purchasing public. 

To this effect is ex parte A. R. Gregoire & Com- 
pany, (102 O. &., 1293.) 

The word "Hunter" is the surname of the presi- 
dent of The Hunter Arm Company, the registrant. 
The word "Hunter" does not change the signifi- 
cance of the arbitrary word "Nitro." The use of 
a surname compounded with an arbitrary word 
upon the same goods upon which the arbitrary 
word alone is used does not produce a new trade- 
mark. 

The decision of the Examiner of Tirade-Marks 
refusing registration is affirmed. 




u 



/ 6/T, ty r^f 




DECISIONS OP THE U. S. COUBTfe. 



Court of Appeals of the District of Columbia. 

.^LEN, COMMISSIONER OF PATENTS * THE ' 
UNITED STATES, EX RELATIONE THI I BE 

9in Music Box Company, a Corporation. 

Decided June SS, IMS. 

1. ma*d«db-Lab«l »*«j»*»"-^ „ the commissioner o£ 
A mandamus doe. not ^ — .n alleged label which 

| SAM JLm E -CO MUI S SI SEK O. P ATEN TSV E ST ED TVXTH DtSCR. 

xnlssioner of Patents the futy of detem tong T 
^S^r^* right or «a* , not 

/rr P :roiT-z^ N o;co« r ^^, 

his determination by mandamus or injunction. 

Jfr John M. Coit for the appellant. 
. j£ ifjtento *««*** and Mr. Fritz v. Bnesen | 
for the appellee. 

Shepard, J.: , _ , 

This is an appeal by the Commissioner of Pat- 
ents from a judgment ordering a writ of manda- 
mus to issue to him commanding the registration 

of a label. 

The applicaii oh for registration was presented by 
The Regina Music Box Company on April 5, 1902. 

The label is rectangular in outline and shows an 
ornamental design surrounding a blank space, oval 
in form, in which appears the word "Regina" 
printed in large letters. In the accompanying de- 
scription, it is declared to be "a label to be used 
for music-boxes; " but there is nothing on the face 
of the representation, itself, to indicate a timita-' 
tion to that particular use. 

Section 3 of the act of Congress of Jung 18, 1874,' 
under which registration was demanded, reads as 7 

follows: 

Sec 3 That in the construction of this act the words " engrav- 
ing, cut, and print" shall be applied only to pictorial illustra- 
tions or works connected with the fine arts, and no prints or 
labels designed to be used for any other articles of manufacture 
shall be entered under the copyright law, but may be registered 
in the Patent Offlce. And the Commissioner of Patents is here- 
by charged with the supervision and control of the entry or reg- 
istry of such prints or labels, in conformity with the regulations 
provided by law as to copyright of prints, except that there shall 
be paid for recording the title of any print or label, not a trade- 
mark, six dollars, which shall cover the expense of furnishing a 
copy of the record, under the seal of the Commissioner of Pat- 
ents, to the party entering the same. 

The Examiner of Trade-Marks to whom the ap- 
plication was referred in the first instance was of 
the opinion that the representation was not a label 
within the meaning of the statute, because not de- 
scriptive of the article upon which it was intended 
to be used and, therefore, denied its registration. 
His decision was twice repeated thereafter, and 
appeal was then taken to the Commissioner of 
Patents. The latter agreed with the Examiner 
that the representation was not a label, but was of 
the nature of a trade-mark and affirmed his deci- 
sion. The petition for mandamus was then fite-l- 



The grounds of the Commissioner's decision ; i e 
clearly set forth therein, from which we make the 
following extract: 

The word "label" itself necessarily implies that it is descrip- 
tive of the article to which it is applied, and this Office has held,- 
that a print or label cannot be held to be " for any other article' 
of manufacture " within the meaning of the statute unless it 
indicates that article. {Ex parte Moodie, 28 O. G.,1271; ex parte 
Nahn, 82 O. G., 1210; ex parte Barnhart Bros, and Spindler, 87 
O. G., 2118; ex parte Ball. 98 O. G., 2866.) The indication must 
be in the print or label itself, and not merely in a statement 
made by the applicant accompanying it. The print or label is 
Vhc thing which is registered, and its registrability must be de- 
termined by its intrinsic qualities and not by some possible or 
contemplated use of it. All of the pictures registered by the 
Librarian of Congress and the arbitrary designs patented under 
the design law might be applied to china or other articles as or- 
namentations thereof; but a, mere statement by the applicant 
that he intended to so u se them would clearly not warrant this 
Office in registering them as labels for the articles mentioned! 
If such a statement of use by the applicant were permitted to 
determine whether the alleged print or label should- be regis- 
tered in this Office or in the Library of Congress, the distinction 
attempted to be drawn by Congress between the two classes of 
artistic productions would be nullified. 

It must be held that a label to be registrable in this Office 
must not only possess artistic merit, but must be descriptive of 
the article for which it is used. 

The alleged label in this case is said by the applicant to be 
used for music-boxes; but the label itself does not indicate this. 
It is merely an arbitrary ornamental design having the word 
"regina" thereon, and might very appropriately be used as a 
trade-mark for various articles. 

We are not prepared to say that the statute im- 
posing the duty in this case requires the perform- 
ance of a simple ministerial act, and is so plain in 
its terms as to admit of no room for construction: 
The Commissioner was called upon to decide 
whether the thing presented for registration was, 
or was not, a label as defined by the statute. 

The foregoing extract from his opinion clearly 
shows that the duty of interpretation was not 
raised as an excuse for his action. As declared in 
the latest expression of the Supreme Court of the 
United States on this subject: 

Whether he decided right orwrong, is not the question. Hav- 
ing jurisdiction to decide at all he lfad necessarily jurisdiction, 
and it was his duty to decide as he thought the law was, and 
the courts have no power whatever under those circumstances 
to review his determination by mandamus or in junction. ( U. ,S' 
v. Hitchcock, 190 U. S.) 

Without further discussion, the judgment will be 
reversed with costs, and the cause remanded with 
direction to dismiss the petition. It is so ordered. 



Classification of Trads-Marks. 

(Order No. 1,513.) 

Department of the Interior, 

United States Patent Office, 

Washington, D. C, July SO, 1903. 
The following changes in trade-mark classification are hereby 
directed: 
The present existing numbers of all classes are abolished. 
The following classes are abolished: 
Agricultural implements, 
/ Cutlery and edge-tools, 
I Laundry articles, 
\ Machines, 
, Stores and heaters, 
. Tools and devices, 
and the following classes are established by titles only: 
W Agricultural machines and implements. 
V * Electrical apparatus and supplies. 
T . Laundry machines and articles. 
f Machines and devices. 
y<-' "Steam and plumbing supplies. 

/ Stoves and furnaces. 
^/ Tools and cutting instruments.' 

E. B. MOORE, 
Acting Commissioner. 



Classification of Trade-Marks. 

(Order No. 1,544.) 
Department of the Interior, 

United States Patent Office, 

Washington, D. C, August 3, 190S. 
The following changes in trade-mark classification are di- 
1 re cted : 

(ThTfollowing classes are abolished! 



Th< 



Dairy products. 

Iron, steel, and manufactures. 

Packing, (machinery.) 

e following classes are established: 
Belting, hose, and packing. 
Conductors and insulators. 
Dairy machines and products. 
Fire-extinguishers. 
Furniture. 

Lumber and manufactures. 
Seeds, plants, and trees. 
Metals and manufactures. 



E. B. MOORE, 
Acting Commissioner. 



COMMISSIONER'S DECISIONS. $ffo 
Ex parte The Strobel & Wilken Co. 

Decided June 6, 1903. 
Trade-Mark; Registration— Mistake in Applicant's Name- 
Correction. 
Where in printing a trade-mark certificate of registration 
the applicant's name is made to conform to the signature to 
the affidavit and statement, Held that no correction will be 
made upon an allegation of a mistake in the name. 

On petition. 

TRADE-MARK'FOR DOLLS. 

Trade-mark registered April 21, 1903, No. 40,134. 

Mr. Harold 8. MaoKaye for the registrants. 
Allen, Commissioner: 

This is a petition that there be reissued without 
expense to the registrants a reformed and corrected 
certificate of registration as a substitute for that 
issued on April 21, 1903, No. 40,134, or that the case 
be reopened and the papers returned for proper 
signature of the applicants, permitting the further 
prosecution of the case thereafter without further 
expense to the applicants. 

The trade-mark was registered in the name of 
" The Strobel & Wilken Co." It appears from the 
affidavit on file that the correct name of the regis- 
trant company is "The Strobel k Wilken Com- 
pany." 

The letter of advice and the statement are signed 
" The Strobel & "Wilken Co.," and the Ham* so ap- 
pears on the impression of the corporate seal at- 
tached to the statement. The abbreviation "Co.'' 
was printed in the preamble to the specification to 
agree with the signature. 

The registration is printed to correspond with 
the name which appeared in the case as filed, and 
therefore this registration cannot be corrected. 

The petition is denied. 



If 



7 6-J~ff •?-<" '~F~ 



J/1 




(T~/St> 




U, S. Oirouit Court of Appaals— Seventh Circuit, 
A. Bauer & Co. v. Ordeii of Cartiii/sian 
Moxks, Convent La Grande Char- 
treuse. 

Januarji 5, i 

1. TBADE-SlARSS— SlKILAMnWOF NAJJIS — "CHARTREUSE" AND. 
n Chassbuhs " 
The word !M3hasseurs" he-Id to be so similar in soundtand 
in appearance to the word " Chart .ease " as to be likely to de- 
ceive purchasers when used upon the same class of goods. 
g Same— "Chartreuse"— Ihdioatioh of Origin. 

Me word "Chartreuse " as applied to the cordial made by 
tl. ■ Carthusian monks designates at once the inventor, the 
maker, and the place of manufacture and constitutes in each 
of these particulars a distinctive mark which could not truth" 
nnly be applied by others to a similar or analogous product. 
8.. Same— Owners of Mark— Successors in Business— Fbacdu- , 
lent Representations. 
Where the Carthusian moDks who invented and first made 
" Chart! euse" were incorporated and to-day carry on the b jsi- 
ness, H'M that there is no deception or fraud practiced upon 
the public 1 by the failure to indicate that they are the succes- 
sors of the original makers and that the person who manages 
the business has changed. 

Appeal from the Circuit Court of the United 
St&tai for the Northern District of Illinois. 

STATEMENT OF THE CASE. 

Chartreuse ia "a highly-esteemed tonic cordial 
'obtained by the distillation of various aromatic 
plants, especially nettles, growing on the Alps. It 
derives its name from the celebrated monastery of 
the Grand Chartreuse in Prance, where it is made." 
(Century Dictionary.) The Order of Carthusian 
Monks has its monastery at La Grande at or near 
Voiron in the department of Isere, in the Republic 
Bf SVance. The order was instituted several cen- 
turies ago and for four hundred years has been en- 
gaged in the manufacture of this cordial, presum- 
ably at first for the use of the monks and for those 
in ill-health. Afterward there grew up a large 
business in its manufacture and general sale. At 
some time, it does not appear definitely when, but 
over fifty years ago, the order of monks was incor- 
porated under the laws of France under the cor- 
porate name of "The Order of Carthusian Monks, 
Convent La Grande Chartreuse," the appellee 
here. The business of the manufacture and sale 
of this cordial is conducted in a section of the con- 
vent proper under the supervision of an officer 
known as the "pere procureuv," who is one of the 
monks of the order. The liqueur is made of dif : 
fferent degrees of strength, indicated by the color 
fci'veh to it— green or yellow. It is contained in 
glass bottles colored according to the color of the 
cordial contained in it. This bottle is of peculiar 
Bhape, containing a liter of fluid, and is a round 
anTl tall bottle with a peculiar bulging neck and 
so far as the record discloses, until the acts of the 
appellant complained of here, of a shape that was 
never used except for this cordial. There is blown 
in the glass near the base of the neclc of the tot tic 
the trade-mark "Chartreuse," in combination with 
the letters "G ,k '' ! and seven stars surrounding a 
globe surmounted by a cross. The labels are of 
green or yellow color corresponding to the charac- 
ter and color of the cordial contained in the bot- 
tle. They are attached to the face of the bottle 
below the trade-name blown therein, and printed 
thereon are the words: 



"LIQUEUR 
"A L.\ 



PABRIQIJEE 
CHARTREUSE." 



Below each of these columns appears what pur- 
ports to be a facsimile of a signature " L. Garnier," 
above each imprint of the name being a small 
globe surmounted by a cross and underneath the 
words "Depose" 1-7-69," beneath these the words,in 
the center, "France," and beneath that the words 
."Agents for United States H. A. Batjer & Co. 
Broadway, 45, New York. Trade Mark No. 3089. 
■gfetered Sep. 12th, 1870, in the United States 
Patent Office at Washington, D. C." There is also 
a round-shaped label having a green or yellow 
ground corresponding with the color of the liqueur . 
in the bottle and of the same size as the top of the 
cork and placed over the top of the cork, having 
thereon around the circumference the words 
" Grande. Chartreuse. L. Garnier." The top of 
the neck of the bottle is also coated with was of p 
reddish-brown color. So identified, this liqueur 1 
has become celebrated in every country of the 
world, its annual sales in the United States of 
America amounting to four thousand cases annu- 
ally, in the State of Illinois five hundred cases an- 
nually, and in the city of Chicago about four hun- 
dred cases annually. The appellant in the year 
1897 or 1898, m, year or two before the filing of this 
bill, being familiar with the article chartreuse, 
procured glass bottles to be made of the same color 
and almost identical inshape with the bottles of the 
appellee and placed upon the market in these bot- 
tles a cordial— in the green bottles a cordial of 
green color, in the yellow bottles a cordial of yel- 
low color — precisely as did the appellee. It placed 
upon the bottle containing the yellow liqueur a 
yellow label and upon the bottle containing the 
green liqueur a green label of the like shape with- 
the label of the appellee and having thereon the 
words: 



"GRANDE 
"LIQUEURE 



DES 
CHASSEURS." 



Underneath each of these was a device sur- 
mounted by a crown, and underneath it in the scroll 
an eagle upon an ermine cape, and crossing it di- 
agonally two staffs similar to a bishop's staff, and 
underneath that the words "Agent por les Etats 
Unis," and underneath that in script " Angehque 
Bouchard & Roehelle." The top of the neck of 
the bottle is covered with wax of a color appar- 
ently darker than that upon the appellee's bottle; 
but it is impossible to tell from the exhibit what, 
if anything, is impressed thereon, and there is no 
description of it in the record. The bill is filed for 
an injunction and for an accounting, and the de- 
cree to that effect is brought here for review. 

Mr. F. II. Trude for the appellant. 
Mr. F. 31. Charlton and Mr. W. M. Copeland for 
the appellee. 

Before Jenkins, Grosscup, and Baker, Judges 
Jenkins, 7., (after stating the facts as above:) 

The name " Chartreuse " was applied to this cor- 
dial because it was invented and made at the 
monastery of the Grande Chartreuse and made by 
the Carthusian monks. So that, as held by the 
French courts, the name at once designates the in- 
ventor, the maker, and the place of manufacture 
and constitutes in each of these particulars a dis 
tinctive mark which could not truthfully be ap" 
plied by others to a similar or analogous product. 
(Gamier v. Berthe, 4 Annales, 119; Garnier v 
Mivoire, 4 Annales, 155; Garnier v. Li m! it re. 11 
Annales, 225; Gamier v. Gamier, 14 Annales, 253; 
Gamier v. Gamier, 17 Annales, 211, 257; Browne. 
Trade-Marks, Sees. 407-11 1, 582.) 

There can be no question of the design of ihe 
appellant to'pirate the i trade-names of the appellee, 
to clothe its product in the dress adopted by the 
appellee, and to palm off its goods on the public 
as I he goods of the appellee. It procured bottles 
to contain its cordial to be made in the same un- 
gainlyshapeasthebottleused by the appellee. The 




'glass was colored to correspond witn the color ot 
the cordial contained therein precisely as was done', 
by the appellee. Its labels correspond also in color 
with those of the appellee, and the arrangement of 
the lettering thereon corresponds with that upon 
the labels of the appellee. It substituted the word 
' ' Chasseurs " for ' ' Chartreuse, " a word not dissimi- 
lar in sound and in appearance and likely to de- 
lude a purchaser. It placed upon its labels pasted 
upon the bottles containing its cordial the untruth- 
ful statement that Angelique Bouchard & Rochelle 
were agents "por les Etats Unis," putting forth a 
fablse suggestion^ that the article was imported from 
France,' when, in fact, it was made in the city of 
Chicago. ¥e have little patience with such 
schemes. Bauer, the president of the appellant, 
by his evidence appears to suppose that by differ- 
entiating the label in any respect there ceases to 
be imitation. He is uninformed in the law of un- 
fair trade. In one of the French cases referred to 
the court decreed the confiscation of all the spuri- 
ous liqueurs and elixirs, the destruction of the false 
labels and marks, a fine of five hundred francs, six 
months' imprisonment, and the publication of the 
facts in the public journals. The officers of the 
appellant company have reason to congratulate 
themselves that they reside without the Republic 
of France. In the case of A. Bauer & Company v. 
La Societi Anonyme Be La Bistillerie Be La Liq- 
ueur Benedictine Be VAboaye Be Fecamp here- 
with decided (120 Fed. Kep., 74) we have said all 
needful to be said touching the law applicable to 
the case in hand. The claim is urged here as it 
was urged there that the appellee is not entitled 
to the aid of a court of equity, because it is an as- 
signee of the owner of the original business and 
trade-mark and good-will and puts forth its goods 
without a statement thereof. There is no founda- 
tion, in fact, for the claim. The order of Carthu- 
sian monks, which has existed for centuries, is the 
order which was incorporated and which to-day is 
carrying on the business. The pere procureur ap- 
pointed to manage this secular business is selected 
from the monks of the religious order and is suc- 
ceeded upon his death or retirement by some other 
monk. There is no change and has been none in 
the conduct of the business. The property and 
good-will belong, as they have always belonged, 
to the order of Carthusian monks, and there is no 
need of any statement of a change of the individual 
who fills for the time being the office of manager. 
The decree is affirmed'. 



, I0T4& 






U, S. Circuit Oourt of Appeals- Seventh Circuit 
A, Bauer & Co. v. Siegert et al. 

Decided January 0, 1003. 

Appeal from the Circuit Court of the United 
States for the Northern District of Illinois. 

STATEMENT OF THE CASE. 

In the year 1824 Dr. Johannes Gf. B. Siegert, a 
physician and ex-surgeon general of the army of 
the Republic of Venezuela and the father of the 
appellees and then resident of the town of Angos- 
tura, on the Orinoco river, in the Republic of 
Venezuela, established a business in the prepara- 
tion and sale of certain bitters originally named 
"Aromatic Bitters," but for a long time known to 
commerce as "Angostura Bitters." The business 
was continued by him during his lifetime. In 1864 
he took his son Carlos, one of the appellees, into 
partnership, continuing the business under the 
same name until the year 18G7, when the firm-name 
was changed to "Dr. J. G. B. Siegert & Hijos." 
In the year 1846 the name of the town Angostura 
was changed by decree of State to that of Ciudad 
Bolivar, since which time the name "Angostura" 
as the name of a town has officially ceased to exist 
and gradually, as matter of fact, has ceased to be 
used. The business continued to be carried on 
by Doctor Siegert and his son Carlos at Ciudad 
Bolivar until the death of the father at that place 
in the year 1870. The firm, however, had done 
their shipping through the firm of Gerold & Ulrieh 
from Port of Spain, in the island of Trinidad. 
Carlos D. Siegert, the surviving partner, continued 
the business under the old firm-name at Ciudad 
Bolivar until the year 1872, when his brother, Al- 
fredo C. Siegert, was admitted to the partnership 
and the firm-name was changed to Dr. J. G. B. 
Siegert & Hijos. They continued the business, and 
in 1875 removed their factory to Port of Spain, 
Trinidad, where the business has since been and 
is now conducted. In 1876 Luis B. C. Siegert, a 
brother, was admitted to the firm, which has since 
been and is now constituted of the three brothers. 
These bitters are compounded according to a secret 
formula known only to the Siegert family and are 
sold in every continent, the sales in the United 
States being in amount between ten thousand and. 
fifteen thousand cases a year. One thousand to 
fifteen hundred cases are sold annually in the State 
of Illinois, of which Chicago consumes from five 
hundred to one thousand cases. The name "Angos- 
tura" was first applied by the public to these bit- 
ters from the name of the town at which they were 
made. This name was accepted by Doctor Siegert 
in the year 1830 and employed by him and his suc- 
cessors as the distinctive name for the bitters. It 
has been printed on the labels and used upon busi- 
ness cards and stationery and in advertising the 
goods and was registered in the Patent Office at 
Washington as a trade-mark or trade-name on the 
14th day of June, 1881, upon application filed May 
21, 1881. The bitters are put up in glass bottles of 
two sizes — whole and half bottles. These are of a 
peculiar form and of a dark-greenish tint, with the 
name " Dr. J. G. B. Siegert & Hijos " blown in the 
shoulder and neck and also in the bottom of the 
bottles. Around the neck of the bottle since the 
year 1884 upon goods imported into the United 
States is a label in the siuiilitudp of a revenues ' 
stl -..-■ o! :. •. ' 

ing, with tti 

- one and ■ 
inches Wi le, in the v . Idle of wl t is b si 

2d 2ut or figure inyolky een- 

t ;r a re) ' "■ - - '-'-•" " ■ - ■-'-'-' ' : ,: 

rt surrounded 



i sr, ape i which i ■'. ige L the w . 

itters.. Dr .J. G.B.Sii 
. . ..-■■:■ nged sen 
ted the figui is ' : iS(i ' an la] l the 
p ' be. the words " r J ■ '. aly ■' - 

( ; oni '•■ - ta :.■■. I • es the pi •■ • ' 

eit! rsid sof thepietu 
trii circles, onone df ■ hii is insc 
"J. W. "VVi a, 2Tew ) 

and upon the other 

»o a ! i ' ■ ' 

I he bottl 

inch* '. hiehisi 




I 

■ 



7* 




' ■ 




V* 




■ label, { 
on - n the lal 

: Ban only be i 
h, German, and 
■ are prinl 

unningpai hthewhilej 

. ' . 

• caution in English, German, 
langu 
inted on a strip running parallel 
:imile sigi 

ing-wax. lego 

and manner except tha 
' . latter* 

: ■ . • . d sutastan 

• - ■ . i 

tl every on 

good idisthe 

ing ;sebi1 

ati : ' ' '".' 

be of Illinois and ( f 

. ■■ I ingof 

... ,.i 

ntain 

i tli d upon tl • ■' ■ -v. . 

in i tie 

■ . ■ .... ■■ 

tant Uythelongl xnd 
L>el of the appellee Lntii Idleof 

i stamp-shaped cut or ure of subst 
!ly tl dido ' 

nter of '-■•:' ieh is a 
being initialsof 1 oi' 

'ompany, under 
lent of the appellant's business is condi 
These occupy the same relative po 

nst of Doctor Siegert on eck-labej 

of the appellees, inclosed by an oval border of sub- 
stantially the same size, shape, and color as the 
upon -which are arranged the words 
"Tucker-Hardy Company" in white letters and 
in the s to 3 relative position as the words ' A i- 
a Bitters, Dr. J. G. B. S;es?rt ! ' in the »6 t 
pellees. At either side of the stamp- 
1 figure are arranged two half-circles, on one 
ich is printed the word "Angostura " and on 
the other the words "Bark Bitters,^' The body- 
label is of the same shape as that of the appe 
havjc a whi ■ jro'und 1 I thereon 

■lie a description of the supposed q 
\iid properties of the bitters, in the English, 
German, and Bohemian languages, together with 
the name "Angostura Bitters " and tho signature 
in script "The Tucker-Hardy Company'' of the 
same general appearance and in the same relative 
position as upon the body-label of the appellees 
and printed lengthwise between two cuts or fig= 
nres— one at the top and one at the bottom of an 
oblong strip about one inch wide— like to that of 

opellees, running vertically from the r 
of the top of the label to the bpttom thereof, the 
German, and Bohemian description be- 
rinted in columns of the same length and run- 
: I el with the white strip bearing the fac- 
simile-signature. There are two cuts in imitation 
of and in the. same relative position as the appel- 
lees' in lb itially the same style, form, ai 

-nent of type, lettering, cut, design, figures, 

and marks upon the like character of paper, with 

a in the L: I ri-man, and 

es bearing index-nan I 

in sub iythe same form, arrangement, let- 

:;, cut, dei ; trksasin ■ 

body-label, as in the case of 
the appellees, covers the body* ittle. These 

botti ls lish-broy 

■ Prior to the eoi i 

id bottles which ha I 
tters - es and in which 

■ ith ..:.".. 

ntlsol bittersin 

■ ' . I be 

lottleswhei 
i 



- ■ t OO 

goods tuns clothed, from palming 

: i the use 

of tli in'co 

articl 

be appellant from the use of the dre 
scribed and from tho use of the word "Angos 
from which decree an appeal is taken to Sis court'. 

James A. Fullenwidi r and Mr, John 8 
for the appellant. 

UiamM. Copeland [for the app( 
Before Jenkins, Grosscuf, -and Baker, J\ 
Jenkins, J., (after stating the facts as above:) 

is is to us a plain case! The dress emn : 
by the appellant, the character and color of the 
bottle, tho character and color of thehei 
the character, color, and arrangement of 1« 
press on the body-label, and the unusual covei i:,o 
Of the bottom of the bottle with the label renders, 
it clear that the appellant sought to and did palm 
off its goods as those of the appellees. If confir- 
mation were needed, it is found in the use by the 
appellant of the bottles which had contained the 
bitters of the appellees. We cannot credit the as- 
sertion ot the appellant that the use of the old bot- 
tles upon which was blown the name ' ' Dr. J. G. B. 
Siegert & Hijos" was inadvertent. The resem- 
blances in every feature of the dress are too marked 
to permit us to place faith in the statement. The 
design is so evident that it challenges belief in the 
assertion of ignorance or inadvertence. It is not 
necessary to .consume time upon so flagrant an 
imitation and so manifest a design. 

It is alleged that the word " Angostura " is not 
the subject of a trade-mark or a trade-name. We 
cannot sustain the contention. For upwards of 
half a century no town has existed by that name, 
and even if the old town of Angostura were still 
known by that name the appellant would not be 
permitted by fraudulent imitation to deceive the 
public and wrong the appellees by palming off its 
goods as their goods. The bitters of the appellant 
are made in the city of Chicago. The name "An- 
gostura Bitters " had acquired long before the ap- 
pellant commenced the manufacture of its goods 
a world-wide celebrity. The appellant cannot be 
permitted to usurp that name and dress its goods 
like those of the appellees, and thereby defraud 
the public. (Pillsbury v. Flour Mills Co., 64 Fed. 
Rep., 841; 12 C. C. A., 432; Flour Mills Co. v. Eagle, 
86 Fed. Rep., 608; SO C. C. A., 386; 41 L. R. A., 162; 
Siegert v. Fincllater, 7 Ch. Div., 801.) 

The objection that the product of the appellees 
is not shown to have medicinal properties and 
that they were guilty of fraud in publishing to the 
world that it has medicinal properties and that 
therefore they can have no standing in a court of 
equity, cannot be sustained. No such fraud is 
charged in the answer and no such fraud is proven. 
It is not to be presumed to enable the appellant to 
perpetrate its own fraud. 
The decree is affirmed. 




TJ, S. Circuit Court of Appeals— Seventh Circuit, 
A. Bauer & Co. v . La Society Akokyme Dk La 

DlSTILLERIE I)E LA LIQUEUR BEN'ePICTINE 

De L'Abbaye De Fecamp. 

Decided January 6, 190S. 

Appeal from the Circuit Court of the United 
States for the Northern District of Illinois. 

STATEMENT of the case. 

"Benedictine is a cordial or liqueur, resembling 
chartreuse, distilled at Fecamp in Normandy, It 
was originally prepared by the Benedictine monks, 
but since the French Revolution has been mad© 
by a secular company." (Century Dictionary.) 
An historical account of the origin of this cordial 
is given by Judge Taft in the case of Societe Ano- 
nyme DgJjLJDistitterie Be La B enedictine v. Mi- 
calovitch, Fletcher <& Co. (36 Alb. Law J., 364,) as 

follows: 

' At Fecamp in Normandy, France, the Benedictine monks had 
a monastery for several centuries before the French Revolution. ' 
They invented a liqueur or cordial made from cognac and a de- 

' coction of an herb growing wild in that country, and other in- 
gredients, and made it for their own use. They preserved the 
recipe as a secret in a book of recipes. In 1793 the abbey of Fe- 
camp was destroyed and the monks driven out. A. Legrand, 

c Senior of Fecamp, one of whose ancestors was an attorney-gen- 
eral of the abbey, came into possession of the books of recipes . 
by inheritance. In 1863 he began the manufacture of the liq- 
ueur in question on an estate which was formerly part of the 
lands of the abbey, and where now is situated a museum of 
relics of the abbey. The recipe of the monks was followed ex- 
actly in the manufacture of the liqueur. The recipe is pre- 
served as a secret known only to Legrand Aine, and two sons in 
business with him. In 1863 the liqueur ilrst became an article 

: of commerce, and then for the first time was it given the name 
"Benedictine." 

M. Legrand Aine continued the business from 

' 1803 until 1876, when he made over to the com- 

plainantcorporationthen formed by him the plant, 

business, and good-will. The fact is stated in the 

! case above referred to as follows: 

| In 1876 he (Legrand ) organized a corporation which was called 
the " Societe Anonyme D e L^ Distillerie neLa*E6nedictine Liq- 
ueur De l'Abbaye'De f!Samp," to which he conveyed all the 
property used for the manufacture of this liqueur, together with 
his trade-marks, business assets, and good-will, and received 
therefor four thousand five hundred shares out of the five thou- 
sand shares of the company. He became sole director of the 
company. 

This corporation has since continued and now 
| carries on the business at the same place and with 
the same plant. The article is widely known and 
sold throughout Europe and the United States, 
Canada, and South America, its sale in the United 
States amounting to from five to seven thousand 
cases annually and in the State of Illinois to about 
seven hundred and forty cases annually. In 1863 
M. Legrand selected a peculiarly-shaped bottle to 
contain the cordial— a black glass bottle of un- 
gainly shape, having a bowl-shaped body and long 
neck, which is peculiar to this business and has 
become familiarly known to the trade as a con- 
tainer of this cordial. They come in two sizes — 
i quarts and pints. On one face of the bottle is 
blown the word "Benedictine," with a cross at 
either end. Below it is placed a light-brown label 
with the following printing thereon: " Toutes les 
Bouteilles de Benedictine, Liqueur de 1'Ancienne 
Abbaye de Fecamp doivent avoir au bas une eti- 
quette portant le facsimile de la signature de A. 
Legrand Aine, La plus large ligature du plomb 
qui entoure le col doit porter les marques et in- 
scriptions suivantes;* Veritablef Benedictine.* 
Lebbuchon devra etre marque tout autour de : Veri- 
table Liqueur Benedictine.* Enfin le dessous du 
bouchon portera: D. O. M.f Upon bottles ex- 
ported to the United States and Canada under- 
i neath the label noted is an oblong label with blue 
ground, having thereon the words "Sole Agent 
for the United States of America and Canada. 
'Henry E. Gourd, New York," the words "Henry 
JE. Gourd" being in gold letters, the others being 
j in white letters. On the reverse face of the bot- 
tle on the shoulder is blown a figure somewhat 
I like a horseshoe, within which is a seal of wax of 
the color of a bright vermilion, and upon it there 
j is a miter with a crosier and below three miters, 
i Below this and upon the face of the bottle is a 
! circular light-brown label having thereon the let- 
'ters "D. O. M.," below which is a cross and be- 





neath that the words r 'Le Directeur, A. iV' Be- 
neath this label is another label of similar color, 
having thereon the inscription ' ' Veritable Liqueur 
Benedictine, Marques deposees en France et & 
l'Etranger," and below this a facsimile of the sig- 
nature of A. Legrand Aine. Upon the neck of the 
bottle are two labels of like color with the others, 
j one containing the words ' ' Liquor. Monachorum 
Benedictinorum. Abbatiae Fiscanensis." The 
other placed immediately below has thereon the 
words in English "Imported from Fecamp 
(France)." The cork and mouth of the bottle are 
covered with a tan leather-skin capsule, upon which 

I is pasted a label of like color with the others bear- 
ing the words "Registered Trade-Marks," a wax 

; seal of like color with the other seal being upon 
this capsule and over the mouth of the bottle. A 
leaden band passes around the neck of the bottle 
and over the capsule and is attached under the 
seal on the shoulder of the bottle. The trade- 
mark ' ' Benedictine " was registered by M. Legrand 
in September, 1876, in the United States Patent 
Office pursuant to the act of Congress, as were also 
the other labels which have been described. The 
appellant, A. Bauer & Co., is a corporation of the 
State of Illinois, engaged in the general wholesale 
and retail liquor business in the city of Chicago. 
Prior to the filing of the bill it placed on the 

I market at the city of Chicago and sold a cordial 
in bottles of the precise sizes and nearly the exact 
shape of the bottle of the appellee, having the 
imitation of a horseshoe blown in the bottle upon 
its shoulder, as in the appellee's bottle, and a red 
seal of wax therein resembling the seal of the com- 
plainant, with the letters around it "Liqueur De 
St. Benedict." Below it is a circular label of like 
color and form to that of the appellee's label, hav- 
ing thereon the words and letters across the face of 
it "A. B. C. Liqueur D^gt. Benedict" and upon the 
label a red cross. Beneath that label is another 
label of like color, havingthewordsprinted thereon 
"Liqueur DtejSt Benedict." Around the neck of 
the bottle are two labels of like color with the ap- 
pellee's labels, the upper one having the inscrip- 
tion "Toutes les Bouteilles de Liqueur St. Bene- 
dict doivent avoir au bas une etiquette portant le 
facsimile de la signatur de Mossieur," with the fac- 
simile-signature "The Tucker Hardy Co.," the lat- 
ter being the department name given to a branch 
of A. Bauer & Co. Underneath that label is a 
smaller label of like color, having thereon the 
words "Fabrique en Etats Unis." Upon appel- 
lant's bottle there is a band of lead underneath the 
rim of the neck stretching across the cork. The 
cork is covered by a capsule made of paper, and 
in place of the leaden ligature in the appellee's 
bottle a substitute ribbon of leaden color passes 
over the capsule and is attached under the seal on 

! the shoulder of the bottle. The mouth of the bot- 
tle is also covered with a wax seal of similar color 
to that of the appellee's, and the name "St. Bene- 
dict" is blown upon the face of the bottle. The 
court below decreed for the complainant, appellee 
here, enjoining the use of the term "Liqueur St. 

! Benedict" or "St. Benedict" and the use of the 
bottles and of the marks on the labels specified, 
which decree is brought here by appeal for review. 

Mr. F. H. Trude (John Stuart Roberts of coun- 

, sel) for the appellant. 

Mr. Francis M. Charlton and Mr. William M. 
Copeland for the appellee. 
Before Jenkins, Grossctjp, and Baker, Judges. 

1 Jenkins, J., (after stating the facts as above:) 
We have so often spoken to the subject of trade- 
mark and of unfair trade and to the principle by 

! which courts of equity are guided in restraining 

; one from palming off his goods as the goods of an- 
other, that it is quite unnecessary at this time to 
go over the ground at length. It is true that no 
one has a monopoly of form, nor has he a mu- 
nopoly of color, of the shape of the letters, or geo- 
graphical names, or of his own name, but one may 
not by means lawful in themselves when devoted 
to a lawful end perpetrate a fraud upon the pub- 
lic or infringe the rights of another. (Charles E. 




Hires Co. v. Consumers' Co.; 41 C. C. A., 71; 100 
Fed. Rep., 809.) It would be impeachment of in- 
telligence to say that here there was not design to 
market the appellant's goods as the goods of the 
appellee. There is such marked simil- >* 7 in the 
shape of the peculiar bottle, in the ch&.-acter and 
arrangement of the labels, the letterpress, the use 
of the French language of the letterpress upon an 
article manufactured in the city of Chicago, in 
the wax seals, in the capsules covering the corks 
and the means of fastening them, and, in the name 
"Benedictine" and "St. Benedict blown in the 
bottles that it is clear not only that there was de- 
sign to deceive, but' also that deception is most 
probable. The trade -mark "Benedictine" has 
been sustained in' able and elaborate opinions in 
1887 by Judge Taft, when upon the bench of the 
superior court of Cincinnati, in Societe Anonyme 
Be La Bistillerie Be La Benedictine v. Micalo- 
xitch, Fletcher' & Co. (36 Alb. Law J., 364) and in 
1890 by judge Thayer in Societe Anonyme Be La 
Bistillerie Be La Liqueur Benedictine BeJ?Ah- 
baye Be Fecamp v. Western Bistilling Co., (C. C. ; 
43 Fed. Rep. , 41G. ) There can be no question of the 
right of the appellee to the use of the garb with 
which it has clothed its product nor of the design 
of the appellant to pirate that right and to sell its 
goods as the goods of the appellee. 

It is urged that the appellee claims as the as- 
signee or purchaser of the business from M. Le- 
grand that in the use of the trade-marks so pur" 
chased it should indicate that it is the assignee or 
purchaser and that failing therein it cannot be 
protected in their use. This contention is predi- 
cated upon the case of Medicine Co. v. Wood, (108 
U. S., 218; 2 Sup. Ct., 436; 27 L. Ed., 706.) There 
the complainant was the manufacturer of a certain 
medicine known as " Atwood's Vegetable Physical 
Jaundice Bitters " and claimed as its trade-mark 
that designation with the accompanying labels> 
the right being derived from one Moses Atwood, the 
designation mentioned being L blown in the glass 
and the labels attached stating that the article 
was manufactured by Moses Atwood, Georgetown, 
Mass., while the medicine was, in fact, manufac- 
tured by the complainant in the city of New York. 
The court, by Mr. Justice Field, lays down the 
principle declared in the following language: 

The object of the trade-mark being to indicate, by its meaning 
or association, the origin or ownership o£ the article, it would 
seem that when a right to its use' is transferred to others, either 
by act of the original manufacturer or by operation of law, the 
fact of transfer should be stated in connection with its use; oth- 
erwise a deception would be practiced upon the public, and the 
very fraud accomplished, to prevent which courts of equity in- 
terfere to protect the exclusive right of the original manufac- 
turer. If one affix to goods of his Own manufacture signs or 
marks which indicate that they are the manufacture of others, 
he is deceiving the public, and atteniping to pass upon them 
goods as possessing a quality and merit which another's skill 
has given to similar articles, and which his own manufacture 
does not possess in the estimation of purchasers. To put forth 
a statement, therefore, in the form of a circular or label attached 
to an article, that it is manufactured in a particular place by a 
person whose manufacture there'had acquired a great reputa- 
tion, when, in fact, it is manufactured by a different person at a 
different place, is a fraud upon the public which no court of 
equity will countenance. 



It will be observed that in that case the labels 
contained the assertions that the article was manu- 
factured by a certain person and at a certain place, 
both of which assertions were untrue, and that the 
decision proceeded upon the theory that such 
statements were not honest and worked a decep- 
tion upon the public in attempting to pass upon 
them goods as possessing a quality and merit which 
another's skill had given to a similar article. The 
trade-mark and labels upon the bottles of the ap- 
pellee contain no direct assertion of the maker. 
It may rather be said that the association of the 
name with the article indicates the place or proc- 
ess or quality of manufacture. Here the place of 
manufacture remains the same. The secret process 
is unaltered. There would seem to have been no 
substantial change of ownership." The' manufao, 
ture continued at the same place and substantially 
under the direction of the same person. The cor. , 
dial made from the recipe of Benedictine monks 
has been known for nearly four hundred years. 
Its reputation rests upon its quality. Its excel- 
lence is assured by the fact that it is made in ac- 
cordance with the original formula and at the 
place where it alone has from the beginning been 
made and where the herb of which it is a decoc- 
tion grows wild. The name as applied to a cor- 
dial so ancient and in quality so unchanging has 
by association become the designation of place of 
manufacture and of quality rather than that of 
the manufacturer. There is here no false state- 
ment. " There is no deception upon the public. 
In such case the reason of the rule fails, and the 
rule itself, proper in appropriate cases, should not 
here be oermitted to work a wrong. The question 
was elaborately considered by Judge/Taft and by 
Judge Thayer in the cases referred to, and their 
reasoning meets with our approval. (See, also, 
Pillsbury v. Flour Mills Co., 64 Fed. Rep., 841, 
850; 12 C. C. A., 432, 441; Stone Co. v. Wallace, C- C. ; 
52 Fed. Rep., 431, 437; Cuervo v. Landaner, C. C; 
63 Fed. Rep., 1003; Feder v. Benkert, 18 C. C. A., 
549- 70 Fed. Rep.. 613; Tarrant &■ Co. v. Johann 
Hoff 22 C. C. A., 644; 76 Fed. Rep., 959; Hoxiev. 
Qhaney, 143 Mass., 952; 10 N. E., 713; 58 Am. Rep., 
149; Carmichael v. Latimer, 11 R. I., 395; 23 Am. 

Rep., 481.) 
The decree is affirmed. 



OOMMISSIOtfEE'S DECISIONS, 




/0&.&f. '/z- 



Ex parte Peck Brothers Company, 



Decided September 2, 1908. 
. Trade-Marks— Class of Goods— Plumbers' Supplies. 

Held that a single trade-mark registration may not include 
the various articles coming under the general class of plum- 
Jjprs' supplies, since they are not goods of substantially the 1 
same descriptive properties. 
>. Same — Same — Substantially the Same Descriptive Proper- 
ties.' 
The words "substantially the same descriptive properties" - 
mean that the articles are so nearly alike in characteristics 
and use that the purchasing public seeing them sold under the 
same mark would Daturally suppose that they were made by 
,' the same manufacturer. 

On appeal.' 

TRADE-MARK FOR PLUMBING SUPPLIES, ETC. 

Application for registration filed August 27, 1002, 
No. 66,484. : 

Mr. Rudolph W. Lotz for the appellant. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks requiring the above-entitled 
application to be limited to goods which have sub- 
stantially the same descriptive properties. 

The application defines the goods as follows: 

Plumbers' supplies comprising pipes, pipe-fittings, valves, 
tanks, basins, closet-bowls, urinals, bath-tubs, faucets, cocks 
and nozzles, used to convey and contain water. 

It is true that the various articles mentioned be- 
long to what are known as "plumbers' supplies;" 
but it is equally true that they are not so much 
alike that the use of a mark on one would infringe 
the right to use it upon another. For instance, 
the use of a mark upon a pipe would not interfere 
with the right of any one elseto use the same mark 
upon a bath-tub. They are independent rights, 
and for the reasons stated in ex parte Faxon (103 
O. Gr., 891) should be covered by separate registra- 
tions. A single, trade-mark right extends no fur- 
ther than to goods of substantially the same de- 
scriptive properties as the particular goods upon 
which the mark has been used. The words "sub- 
stantially the same " do not mean exactly the 
same; but they do mean that the articles are so 
nearly alike in characteristics and use that the pur- 
chasing public seeing them sold under the same 
mark would naturally suppose that they were 
made by the same manufacturer. It is clear that 
there is not this close resemblance between all ar- 
ticles which come under the general title of plumb- 
ers' supplies. 

The Examiner has not pointed out clearly and 
definitely which, articles mentioned may be re- 
tained in one case; but he was right in holding 
that they cannot all be retained. His action in re- 
quiring that the application be limited is affirmed. 



A 6- W. 7&¥~ 



commission: 



_- H i!±iUlSlUr 



J ' ftp- 



Ex parte Jewell & Vinson: 

Decided September SI, 190S. 
. Trade-Marks— "Os i:-.ood" for Paints— Descriptive. 
The words " Ox Blood " combined with a picture o£ o::-horns 
refined registration as a trade-mark lor paints, since the 
words-are d iseri Hie color ; liat 

-Same— De i jitrprres Words With Arbitrary. Mar . 
ijhe pictui of - associated with the worSs " Or. 

Blood" does not change ia any way the, significance of the 
words as at le color of the 

paint and cannot form a part of a trade-mark. 



O^ appeal. 



TRADE-MARK FOE PAINTS 



Application for registration filed January 30, 
1903, No. 07,510. 

- Mr. Richard J.McCartya.n&Mr. D. P. Wolhaup- 
ter for the appellants. 
Allen, Commissioner: 

This is an appsal from the action of the Exam- 
iner of Trade-Marks refusing to register the words 
"Ox Blood," combined with a pictorial represen- 
tation of the horns of an ox, as a trade-mark for 
paints. 

The -words "Ox Blood" constitute thename of a 
well-known color and are therefore descriptive as 
applied to paints. They are also desesi 
the further reason that the blood of the ox is often 
used in making paint. Although the words are 
! descriptive, the appellants argue that the mark in 
its entirety is registrable, since it includes the horns 
of anox. The presence of the horns, however, does 
not change in any way the meaning of the words. 
They retain their original significance and are jest 
as descriptive as if used alone. If the appl 
have a valid trade-mark, it is not the words " Ox 
Blood," but the representation of the horns. 

The' decision of the Examiner of Trademarks !s 
affirmed. 



COMMISSIONERS DECISIONS. 




In the Matter of the Application of 
(Jeorge A. Newman Company for the Keg- 

ISTRATION OF A TRADE-MARK. 
Decided September 12. 1903. 
Trade-Hark Application-Witnesses to Signature 

A trade-mark application should be accepted and consid- 
ered upon its merits although it contains no witnesses to the 
applicant s signature. The statute and the rules do not re- 
quire witnesses. 

Mr. James L. Norms for the applicant. 
Allen, Commissioner: 

This is a petition that an application for the reg- 
istration of a trade-mark be accepted and acted 
upon, although it contains no witnesses to the ap- 
plicant's signature. 

The application was returned to the applicant 
for the purpose of obtaining the signatures of wit- 
nesses, and it has been refiled with this request. 

The statute and rules relating to trade-mark ap- 
plications do not require witnesses to the signa- 
ture of the applicant and in this respect differ from 
the statute and rules relating to applications for 
patents. There is no general principleof law which 
would necessitate witnesses to the signature to the 
application in the absence of a requirement of the 
statute. 

Form No. 3, on page 20 of the rules relating to 
trade-marl 
but that is n S ' c msare 

s" • 

is '■''■■id i i sh old be ac- 

cepted notwiths .iu absence of witnesses. 

The petition is granted. 



£tA 








/o&ry- nn 







COMMISSIONERS DECISIONS. 



EX PAKTE THE DR. PARKERMEDICINE OWOSAtfS. 

Decided September 85, 190S. 

Tfade-Mark-'I ' !iBLE 0VEB " LIVF ' ^, 

tu A :'; i-esenvbles the word "Liver^,, 

„7f e „ S econfuaontattatradewhea 

^.. ^ of ortides, and forth* reason* 

6h uld n I cd ' 

On appeal. 

TRADE-HARK FOR MEDICINE. 

Application for registration filed June 4, 1903, 
No. 68,454. 

If;-. ffecwtfe M. Baker for the appeljajat, 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing - word 
' ' Liveroid "as a trade-mark for a medicinal prepa- 
ration. 

Registration has been refused in view of the reg- 
istered marks: Grosvenor, No. 4,221, December 19, 
1876; Shook, No. 14,348, May 3, 1887. 

Grosvenors mark consists of the word "Liver- 
aid " used upon a medical compound, and clearly 
resembles the appella it's »afct so closely as to 
cause confusion in the trade. There is a marked 
similarity between the words, whether they are 
written or spoken, and the nnwary purchaser 
would undoubtedly be deceived bj e upon 

the same class of articles. 

Shook's mark consists of the word "Liverine," 
used upon a medicine for affections of the liver. 
This mark also resembles the appellant's so closely 
as to be likely to ca ision. 

The decision of the Examiner of Trade-Marks is 
affirmed. 



W 



COMMISSIONER'S DECISIONS, 




FrazSj^ v. Merchants' Coffee 

'Decided October . . 

1. Trade -Marks— Assignment— Bt t Transferred— 

NO lttGIIT TO REGISTRATION. 

Where a party claims the right to trade-mark registration 
by assignment from the owner of the mark, but the i 
ment does not purport to 1 the business as well as the 

mark. Held that the applicant is not the owner anil is not en- 
titled to reglstratl 

2. Same— Basse— Ersn.-EKs Mcst Be Transferred With Mark. 

A trade-mark right cannot be transferred without a trans- 
fer of the business. 

Appeal on motion. 

t;;- , .:>:;--.::- t : rjn coffee. 

Application, of Charles F. Frazee filed January 
5, i i ; l . '. n of Merchants' Cof- 

fecCo.fi! .1 Btoberl8,lfl 3, No. 60,795; registered 
November 25, 1002, No. 3! ,389. 

Mr. James JS T . Cooke lev Frazee. 

Mr. George C. Morrison for Merchants' Coffee Co. 
Allen, Commissioner: 

This is an appeal by Frazee from the dicision of 
the Examiner of Trade-Marks dissolving the above- 
entitled interference on the ground that Frazee 
has no right to claim the trade-mark. 

It appears that Frazee claims the right to the 
mark by assignment from Swindler & Company. 
That company had used the mark for some time 
upon coffee and upon executing the assignment 
of the mark to Frazee not only continued to sell 
coffee, but sold it under the same trade -mark. 
The assignment doe3 not purport to transfer the 
business together with the mark, and there was 
evidently no intention to transfer the business. 

It is well settled by many decisions of the courts 
that a trade -mark right cannot be transferred 
without a transfer of the business. (Morgan v. 
Rogers, 19 F. R., 590; Weener v. Brayton, 152 Mass., 
101; Witthaus v. Mattfeldt, 44 Md., 393; Dixon 
Crucible Co. v. Guggenheim, SBrewst., (Pa., i 321; 
The Fair v. Jose Morales & Co., 8) 111. App., 499.) 

In Morgan v. Rogers it was said: 

As an abstract right, apart from the article manufactured, a 
trade-mark cannot.be sold, the reason b< ing that such transfer 
would be producth'3 of fraud upon the public. 

It was said by the Supreme Court in Kidd v. 
Johnson, (100 U. S., 017:) 

As distinct property, separate from the article created by the 
original producer or manufacturer, it may not be the subject oil 
s ile. But when the trade-marl: is am te l to art icles manufac- 
tured at a particular establishment ai aspecial repu- 
tation in connection with the place of manufacture, and that 
establishment istrai -:' rred either by contract or operation of 
law to others, the right to the useof the trade-mark may be 
lawfully transf II ul -equent use by the person 
a thi is : ■ rrc-d is considered as only 
indicating tho i it is aflis & are manufac. 
tared at thesameph arei ame i ■ as those 
to which the mark i hedbi itsorig igc r. 

It must 1 Frazee has no right to the 

mark, and therefore the decision of tho Examiner 
of Trade-Marks dissolving the interference is af- 
firmed. 



/Oktf, 2*^1^ 



/^^>7^ 



COMMISSIONER'S DECISIONS. 



<£ 




Ex parte Crucible Steel Company of- 
America. 

Decided October 13, 1903. 

1. Trade-Marks— Error in Registration— Mistake of APPLI- 

CANT — CERTIFICATE OF COT^Rrr 

"Where a trade-mark is registered by a corporation and an 
affidavit is filed alleging that through mistake its place of in- 
corporation was incorrectly given and it is asked that a printed 
copy of the affidavit be attached to each copy of the registra- 
tion, Held that the request will be denied, since the mistake 
was not due to the fault of the Office. 

2. Same— Same - Immaterial Mistake— Place of Incorporation. 

Where a trade-mark registration contains an error in the 
descriptive language stating the place of incorporation, Held 
that the error is not of consequence, and since it does not af- 
fect the validity of the registration no correction is necessary. 

On petition. 



trade-jiark for tool-steel. 



No. 



Trade-mark registered September 22, 1003, 
41,16a. 

Messrs. Christy & Christy for the registrant. 
Allen, Commissioner: 

Tiiis is a petition that a certificate of correction 
be indorsed upon the above-entitled certificate of 
trade-mark registration and that a printed copy 
be attached to each copy of the certificate. 

There is no allegation of a mistake by this Office; 
but it is said that a mistake was made by the ap- 
plicant in dei-cribing itself as a corporation of Penn- 
sylvania, whereas it is in fact a corporation of New 
Jtensey". An affidavit to this effect has been filed, 
and it is asked that it be indorsed upon the cer- 
tificate, entered in the Office records, and that a 
printed copy be attached to each printed copy of 
the certificate. 

Attention has been called to cases where the Of- 
fice has granted similar petitions; but the reasons 
upon which the practice was based are not appa- 
rent. To attach a printed copy of the affidavit 
to each copy of the certificate would involve ex- 
pense and labor, and there seems to be no reason 
why the Office should do this to correct the appli- 
cant's mistake. 

The error being merely in the descriptive lan- 
guage and not in the name itself is not thought to 
be of consequence. It does not affect the validity 
of the registration, and therefore correction is not 
necessary. The affidavit which has been filed may 
be entered in the record of the case and will be 
aci essible there as evidence of identity of the reg- 
istrant; but the Office must decline to print the 
affidavit or attach a certificate of correction to the 
registration certificate. 

The petition is denied. 







i 



L 



^y.^f. 'ty^z_ 



Ex parte Van Eyck. 

Decided October S3. 190S. 
. Trade-Marks-" Weck "-Foreign Word Having Arbitral 

aUEANTNG. 

fnftl d Jy at ^ W ° rd " WeCk " iS re S ist ™ble as a trade-mark 
fo. sterling apparatus, since it is a German word having a 
weU-understood meaning which is arbitrary when applied to 
a sterilizing apparatus. ™ 

. Same- Word Having Arbitrary Meaning-Surname 

Where a word has a well-understood arbitrary meaning it is 
not to be refused registration as a trade-mark merely because 
it appears m some directories as a surname. 
On appeal. 

trade-mark for sterilizing and preserving apparatus 
Mr. Frank v^Briesen for thejipplicant. 
Allen, Commissioner: 

This is an appeal from the refusal of the Exam- 
ner of Trade-Marks to register the word "Week" 
as a trade-mark for sterilizing and preserving ap- 
paratus. 
1 The ground of refusal is that the word is an or- 
i dinary surname and has no arbitrary meaning. 

The appellant has pointed out that the word has 
an arbitrary meaning, since it is the German ab- 
! breviation for "wecken," which means to awake 
or waken. The applicant is a resident of German y 
and probably used the word in its arbitrary sense 
It would probably be so understood by purchasers 
familiar with the meaning of the German word. 
It has been the uniform ruling of this Office that 
descriptive words are no less descriptive because 
written in a foreign language, and it would seem 
upon the same reasoning that an arbitrary word 
is no less arbitrary because written in a foreign 
-language. 

The word "Week" appears in some directories 
as a surname; but it is by no means a common sur- 
name, and in view of its well-defined arbitrary 
meaning it is held that registration should not be 
refused. 

This argument does not appear to have been 
made before the Examiner of Trade-Marks, and 
it is thought that if so presented he would have 
reached a conclusion more favorable to the appli- 
cant. 

The decision of the Examiner of Trade-Marks is 
reversed. 



> \ 



-- 







83^s 



COMMISSIONER'S DECISIONS. 




Ex tarte The Goodmax-Leaviit-Yattbk 
Compah r. 

Decidt ierSl, WOJ. 

1. Trade -M.vt.k — The Word " Rcdberback " for Billiard- 

.. rus— DESCRIPTIVE OR DECEPTIVE— NOT REGISTRABLE. ' 

The word "Rubberback" used in reference to a billiard- 
cloth would convey the impression that the cloth was backed | 
with rubber and would therefore be either descriptive or de- 
ceptive in meaning. 
j5, same— Same— Descriptive— Non-Registrable. 

TH" word ■■Kubberback" substantially describes a compos- 
ite billiard-cloth, which is made of a facing of pure wool se- 
cured by a film of rubber to a non-elastic textile fabric. 
B. Same— Arrangement op Letters in the Word "Rubber- 
back "— N ! Arbitrary or Fanciful. 
Where the mark disclosed consists of two independent es- I 
sential features— the representation of a row of billiard-balls 
arranged in a horizontal line between two bil'iard-cues, which 
is registrable, and a word placed upon the balls, one letter on I 
ea ib ball, this word being descriptive or deceptive in mean. 
ing— Held that the mark as a whole is not registrable. (Ej; 
parte Tabor, 06 O. G., 1036; ex parte Adriance, Piatt & Com ■ 
panv,JC. D.'iB81, 58; 20O. G., 1820.) 

Ox appeal. 

trade-mark for billiard-cloths. 

Mr. Herbert W. T. Jenner for the applicant. 
Allen, Comv: ission >r: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the "word 
" Rubberback" arranged upon representations of 
billiard-balls located in a horizontal line between 
two billiard - cues as a trade -mark for billiard- 
c:oths. There are ten billiard-balls in the line, 
and upon each one of these is printed a letter. 
Tii j letters are so arranged as to mike the word 
" Rubberback." 

The Examiner states that there is no objection 
to the registration of the mark which consists of 
the arrangement of the cues and balls, but he is of 
the opinion that the -word " Rubberback " when 
used as a trade-mark for billiard cloths is either 
riptive or deceptive. It is clear that the word 
"Rubberback" used in reference to a billiard- 
cloth would convey the impression that th* cloth 
was backed with rubber and would therein 
descriptive of the article on which it is used. 

The appellant has referred to the patent to Tur- 
r r, Xo. 741,598, granted October 13, 1003, for a bil- 
liard-cloth which he states describes the goods on 
which the trade-mark is to be used. The billiard- 
cloth described in the patent is a composite fabric 
consisting of a facing of pure wool secured by a 






If 



film oi rubber to a non-elastic textile fabric. The 
non-elastic sheet is for the purpose of preventing 
an undue stretching of the billiard-cloth, and the | 
robber, which is afterward vulcanised, prevents 
"chalk and dust" from working through the 
woolen fabric and " accumulating under ifc" and 
also "prevents moisture in the slate bed from pass- 
ing upward through the cloth." The patentee re- 
fers to the non-elastic fabric as the " backing " and 
the woolen cloth as a "facing" of the composite 
fabric; but notwithstanding this it is apparent 
that the woolen cloth, which is commonly called 
"billiard-cloth," isprovided with a backingof rub- 
ber—in other words, it is provided with a rubber 
bacjs, The word "Rubberback" is therefore de- 
scriptive in meaning when applied to the billiard- 
cloth under consideration. It is to be noted, how- 
ever, that if it is true that the non-elastic textile 
fabric can only be referred to as the backing of the 
billiard-cloth the word " Rubberback" when ap- 
plied to that cloth is deceptive in meaning. As a 
technical trade-mark a word which has a deceptive 
meaning is as objectionable as a word which is de- 
scriptive in meaning when applied to the goods on 
which the word is to be used. 

Applicant states in his brief that he- 
confines himself to the use of the letters of the word "Kubber- 
back 1 ' placed upon the balls, one letter on each ball, and says 
that if he removed these letters the mark would not have the 
same appearance. 

There is nothing so arbitrary and fanciful in the 
way in which the name is associated with the bil- 
liard-balls as to destroy its identity. As stated in 
ex parte Tabor (0G O. OK, 103G) in considering a 
case having substantially the same facts as the 
present one: 

It may be admitted that the letters in the name if arbitrarily 
arranged, so as to destroy the identity of the name would con- 
stitute a valid trade-mark; but so long as they are printed one 
after the other iu regular order, so as to spell the name in the 
usual way, their arrangement cannot be considered arbitrary, 
* * * since the essential feature which at once strikes the 
observer is the name, and the individual letters are lost sight of. 

As in ex parte Tabor, so in this case, the mark 
elk -losed consists of two independent essential fea- 
tures — the representation of a row of billiard-balls 
arranged in a horizontal line between two billiard- 
cues, which is registrable, and a word which is de- 
scriptive or deceptive in meaning and which is 
therefore not registrable. The mark as a whole, 
therefore, cannot be registered. {Ex parte Arfri- 
anas, Piatt & Company, C. D. 1881, 52; 20 O. OK, 
1820.) 

The decision of the Examiner of Trade Marks is 
affirmed. , . - 







DECISIONS OF THETJ. S, COUETS, 







I. 



kJ^V 




Supreme Court of tie United States. 

McLoughlin v. The Raphael Tuck & Soys Co-., 

Limited. 

Decided November SO, 1003. 
i. Copyright— Section 4968, Revised Statutes— Untruthful 
Notice — Imported Article — Penalty. 
Where ahartiele bearing an untruthful notice of copyright 
was imported into the United States, the notice having been 
F impressed on the^article in a foreign country prior to the 
BTpassage of amended section 4903, Revised Statutes, Held that 
the penal provisions of original section 4063, Revised Statutes, 
have no extraterritorial operation, and the defendant was not 
liable. (Flash v. Conn, 109 U. S., 876.) 

3. Same— Same— Same— Same— Same. 

Section 4963, Revised Statutes, provides for a penalty for 
importation and sale in the United States of an article bearing 
an untruthful notice of copyright, proi'Med that the " act shall 
not apply to any importation of or sale of such goods or article 
brought into the United States prior to the passage hereof," 
Held that no liability attaches to one who imported an article 
into the United States bearing an untruthful notice of copy- 
right before the passage of the act though the article was 
sold after its passage. 
8. Admission of Testimony — No Ertior Assigned in Circuit 
Court of Appeals— Not Reviet.-ed on Appeal. 

Where no error concerning the admission or rejection of 
testimony was assigned' in the circuit court of appeals and the 
■opinion of the court of appeals makes no reference to any 
question concerning the ac'm'ssfbflity of the testinu q/, Held 
that it may be assumed that the eorree'.nejs of the ruling of 
the lower court concerning the admission of testimony was 
unchallenged, and the question will not be reviewed on appeal. 

4, Decision Affirmed. 

-<.- Decision of Circuit Court of Appeals; Second Circuit, 113 
Fed. Rep., 85, affirmed. 

. In error to the United States Circdit Court of 
Appeals for the Second Circuit. 

Mr. A. Bell Maleomson for plaintiff in error. 

Mr. Harrold Binney and Mr. Louis C. Raegener 
for defendant in error. 

Mr ; Justice White delivered the dpinion of the 
Court. 

Section 4963 of the Revised Statutes, as amended 
by the act of March 3, 1891, relating to the notice 
of copyright to be affixed to copyrighted articles, 
provided as follows: 

Every person who shall insert or impress stieh notice, or words 
of the same purport, in or upon any book, map, chart, musical 
composition, print, cut, engraving, or photograph, or other ar- 
ticle, for which he has not obtained a copyright, shall be liable 
to a penalty of one hundred dollars, recoverable one-half for 
the pprson who shall sue for such penalty, and one-half to the 
use of the United States. 

On March 3, 1897, the foregoing provisions were 
amended (29 Stat., 694), by the following: 

Every person who shall insert or impress suchnotice, orwords 
of the same purport, in or upon an}' book, map, chart, dramatic 
or musical composition, print, cut, engraving'or photograph or 
other article, whether such article be subject to copyright or 
otherwise, for which he has not obtained a copyright, or shall 
knowingly issue or sell any article bearing a notice of United 
S( ates copyright which has not been copyrighted in this country; 
or shall import any book, photograph, chromo, or lithograph or 
other article bearing such notice of copyright or words of the 
same purport, which is not copyrighted in this country, shall 
be liable to a penalty of one hundred dollars, recoverable one- 
half for the person who shall sue for such penalty and one-half 
to the use of the United States; and the importation into the 
United States of any book, chromo. lithograph, or photograph, 
or other article bearing such notice of copyright, when there is 
no existing copyright thereon in the United States, is prohibited ; 
and the Circuit Courts of the United States sitting .in, equity are 
hereby authorized to enjoin the issuing, pubusnitfg. onsejling of 
any article marked or imported in violation of the Lnited Stat *s 
copyright laws, at the suit of any person complaining of such 
violation: Provided, That this act shall not apply to any impor- 
tation of or sale of such goods or articles brought into the United 
States prior to the passage hereof. 



The state of the law prior to 1897, pertinent to 
this case, was therefore this : A penalty was imposed 
of |100 for untruthfully impressing upon an article 
which was subject to be copyrighted in the United 
States the fact that the samehad been copyrighted, 
but there was no provision or penalty concerning 
the importation from a foreign country of an art£ 
ele which was untruthfully stamped in such coun- 
try as having been copyrighted in the United States'; 
and no express provision or penalty concerning the 
sale of an article in the United States which was 
untruthfully stamped as copyrighted. The amend- 
ment of 1897 caused the previous provision as to 
untruthfully stamping a notice of copyright to ap- 
ply, although the article was not subject to copy- 
right under the law of the United States, and prd- 
hibited the importation of an article untruthfully 
stamped from a foreign country, and also prohib- 
ited the sale of an article in the United States which 
was falsely stamped, the penally previously pro- 1 
vided being made applicable to the added prohi- 
bitions. ' '■ . — 

The plaintiff in error in 1898 commenced this' 
action in the Circuit Court of the United States 
against the defendant in error, to recover the $100 
penalty, provided in the statute, for each of eighty- 
three alleged distinct violal'ons of the statute. 
The basis of the first to the seventieth cause of 
action was asserted to be'that on or about the first 
day of August, 1896, the defendant, "at the city of 
New York, in the State of New York, did publish 
and issue a eeMain picture book or booklet," (a 
distinct article being named in the statement of 
each of the seventy distm: causes of action,) "and 
in and upon said book did knowingly insert and 
impress a false and fictitious notice that the same 
was copyrighted * * V The seventy-first and 
seventy-second causes of action charged that the 
defendant on the eleventh day of June; 1897, in 
the city of New York, "did knowingly issue and 
sella certain picture-book," described therein, with 
a false notice of copyright stamped on it. The 
seventy-third to the eighty-third and last cause 
of action charged the commission as to different 
publications, of like acts, in the city of New York 
on or about April 20, 1897. 

On the trial to a jury the defendant admitted 
that all the publications referred to had on thehi 
an untruthful statement that they had been copy- 
righted under the laws of the United States, which 
statement had been affixed in a foreign country at 
their request and for their account. It was also 
proved by the defendant, without conflict in the 
testimony, that all the- publications having on tin m 
the untruthful statement cf copyright were im- 
ported into the United States prior to the i|ha6%- 
inent of the amendment of 1C27. Under this otaie 
of the proof the trial a verdict for 

the defendant. Error waspr s : c :. e 1 by the plaiu- 
tiff to the circuit court . .1 that court 

affirmed :.) The 

court held law had 

■rite - :rof re didnot 

e " ign couiati "to 

i that was c:py- 
right Id Iaw£ "1 the D ites. 

Concerning the sales made after the passage of 
the amendment of 1897, the court held that the 






■—— 



M 









trial court had correctly instructed tlie jury thai 
as the books so sold after the amendment of 1897 
were imported into the United States prior there- 
to, the right to sell them in the United States was 
saved by the proviso of that amendment. 

The court below was clearly right in its conclu- 
sions as to the non-extraterritorial operation of 
the law as it stood prior to the amendment of 1897. 
(Flash v. Conn, 109 U. S., 376.) In saying this we 
do not wish to be considered as holding that where 
an act done in a foreign country against a penal 
provision of the law of the United States is but 
the initial step in accomplishing a subsequent vio- 
lation in the United States of other penal provi- 
sions, that the act done in the foreign country 
might not, under some circumstanceg, b* treated 
as having been performed in the United States'; 
On this question we intimate no opinion whatever*, 
as the circumstances of the case do not require us 
to do so. Under the law as it stood prior to 1897 
there was no provision forbidding the importation 
of an article falsely stamped in a foreign country, 
or prohibiting the sale in the United States of an 
article falsely stamped. There could, therefore, be 
no possible relation between subsequent lawful 
acts performed in the United States concerning 
the article falsely stamped in a foreign country. 

The court was also manifestly right concerning 
the articles falsely stamped which were imported 
into the United States prior to the amendment of 
1897, but sold in the United States subsequent to 
that amendment. The proviso expressly excluded 
from the operation of that amendment "any im- 
portation of or sale of such goods or articles brought 
into the United States prior to the passage hereof." 
Whilst this was not disputed in the argument at bar, 
it was insisted that the court below erred in affirm- 
ing the act of the trial court in instructing a verdict 
on this subject, because the evidence did not un- 
questionably establish that the articles which were 
sold after March 3, 1897, were in fact imported prior 
to that date. To support this contention the evi- 
dence which is contained in the bill of exceptions is 
referred to. We are of opinion that the claim is 
without merit, and that from the testimony, as 
preserved in the bill of exceptions, it results that 
the trial court correctly instructed the jury on the 
subject. 

It is urged, however, that error was committed 
by the trial court in the admission of proof con- 
cerning the date of the importation of the articles 
sold after March 3, 1897. Whilst we think the con- 
tention is without merit, we shall not review the 
grounds upon which it is based, because it is not 
open to inquiry upon the record before us. No 
error concerning the admission or rejection of tes- 
timony was assigned in the circuit court of ap- 
peals, and that court, in considering the case, 
treated it as involving only two issues, the extra- 
territorial operation of the provisions of the law, as 
it stood prior to March 3, 1897, and the effect of the 
proviso which formed a part of that amendment. 
And this upon the assumption that the correct- 
ness of the ruling of the lower court concerning 
the admission of testimony was unchallenged by 
the plaintiff in error. We say upon the assump- 
tion, since the opinion of the court of appeals 
makes no reference to any question concerning the 
admissibility of testimony, and because the assign- 
ment of errors made for that court was directed to 
the adequacy of the "admissions and testimony" 
to sustain the action of the trial court in instruct- 
ing a verdict. 

Affirmed. 
Mr. Justice Holmes did not hear the argument, 
and took no part in the decision of this case. 



/ 



DECISIONS OF THE TJ, S, 00UETS. 




- _^^«k 



Supreme Court of the United States, 
Warner v. The Searle and Hereth Coi/» 

PANT. 

Decided November 30, 1903. 

1. Trade-Marks— Appeal to Supreme Court. 

Where the infringement of a trade-mark registered under 
the act of Congress was charged, Held that the court had ju- 
risdiction on the ground that the case arose under a law of 
the United States and that there was a right of appeal to the 
Supreme Court. 

2. Same— Registered Marks-Foreign Commerce-Infringe- 

ment. 
Registered trade-m arks are by the wording of the law strictly 
limited to lawful commerce with foreign nations and with In- 
dira tribes, and Such mark can only be infringed when used 
fe that comfiJerce' without right by another than its own*'. 
S. Same— Same— Same— Jurisdiction of Federal Court. 

Where diverse citizenship does not exist and the statutory 
amount is not in controversy, the jurisdiction of the Federal 
court in the matter of registered trade-marks can only be 
maintained when there is interference with commerce with 
foreign nations or Indian tribes. 
4. Same— Same— Foreign Commerce Must be Shown by Bill. 
Where it is sought to enjoin the wrongful use of a registered 
trade-mark, it should be made to appear that the trade-mark 
was then being used in commerce with foreign nations or In- 
dian tribes and that such use was being interfered with with- 
out right by defendant. 

Appeal from the United States Circuit Court of 
Appeals for the Seventh Circuit. 

statement of the case. 

William R. Warner, a citizen of Pennsylvania, 
filed this bill against The Searle and Hereth Com- 
pany, a corporation of Illinois, and Gideon D. 
Searle and others, citizens of Illinois, in the Cir- 
cuit Court of the United States for the Northern 
District of Illinois, alleging: 

That complainant "was the sole and exclusive 
owner and proprietor of, and had used in his busi- 
ness in Philadelphia and in commerce between the 
United States and foreign countries, and particu- 
larly with New South Wales and Victoria, a cer- 
tain arbitrary and fanciful mark, termed Pancreo- 
pep'sine, upon bottles and packages containing a 
certain medicinal preparation," and had sold large 
quantities thereof "throughout the United States, 
and in commerce with foreign countries, and parti<£ 
ularly in the cities of Philadelphia and Chicago;" 
and that the public generally had come to recog- 
nize packages and bottles so marked as containing 
the-preparation manufactured by complainant. 

'That on December 20. 1882, complainant regis- 
tered said trade-mark in the Patent Office and ob- 
tained a certificate of registration according to' 
law, a copy of which certificate and accompanying 
Statement and declaration was attached. That 
defendants had, in violation of complainant's 
rights, "counterfeited, copied and colorably imi- 
tated the trade-mark registered," and affixed the 
mark or symbol " to a medicinal preparation of the 
same general nature as that manufactured" by 
complainant, and hod ad dlofiely imitated com-' 
^lpinant'smark or symbol, and the manner* Of plac- 
ing it on bottles and wrappers, that the public had 
been deceived into believing that the goods of de- 
fendants were those of complainant ; "and that the 
said defendants, together and individually, have 
sold in the northern district of Illinois, and else- 
where, large quantities of the medicinal prepara- 
tion intended for the cure of indigestion similar to 
that manufactured by your orator and contained 
in packages or bottles marked with the trade-mark 
or symbol heretofore referred to as belonging solely 
to your orator, or in such close imitation of your 
orator's trade-mark or symbol as has deceived the 
public and led such public to believe the said mark 
or symbol designated the goods manufactured by 
FOilr orator ;" so that complainant's sa less have beer* 
lessened, and -brbfits lost. 



It was further averred that ''the puMicin gen- 
eral, and particularly the citizens of tlie northern 
district of Illinois, identify the article by the 
name, marker symbol; and that the sputtpus arti-» 
cle manufactured and sold by the defendants asso- 
ciated with the same mark or symbol, or a mark 
or symbol in close imitation thereof, is a fraud and 
deception upon such of the citizens of the north- 
ern district of Illinois, and elsewhere, as purchase 
the same, believing it to be the genuine article 
manufactured by your orator, and thereby the 
public generally, and particularly the citizens*of 
the northern district of Illinois, are damaged and 
misled." 
Complainant prayed for asPeccounting; for dam- 
;es; and for injunction. 
i. defendants in their answer denied that the word 
Pancreopepsine" was a proper subject for regis- 
tration as a trade-mark; and charged that "if not 
deceptive it is purely descriptive, being a mere 
compound of the ordinary names of the ingre- 
dients, or the principal ingredients, contained in 
the medicinal compound, with the name of one 
slightly modified, and they deny, on information 
and belief, that the public have associated the said 
name with the goods manufactured by the com- 
plainant." 

They averred that they were engaged in business 
in Chicago as general manufacturing chemists, and 
that they had, among other things, " put upon the 
market a medicinal compound having special 
merit as an aid of digestion, consisting, aside from 
the diluent, of nearly - forty per cent, of jsure pan- 
creatin, about fifty per cent, of pure pepsin, and a 
few other ingredients in relatively small propor- 
tions; that pancreatin and pepsin are well-known 
medicinal agents of recognized efficacy in promot- 
ing digestion, and have been mixed together for 
medicinal purposes for nearly or quite thirty years 
past; that they have designated their compound 
upon the labels of their bottles and packages ' Pan- 
cro-Pepsin ' in order that the nature of the com- 
pound may be expressed and its purpose as a di- 
gestive implied by the name; that they have put 
the said preparation in bottles and sold it upon the 
market botfl as a powder and in liquid form, the 
latter being' designated ■ Elixir Pancro-Pepsin. ' " 

Defendants said that in adopting the name they 
had only followed common usage where it was de- 
sired that the name should be generally descrip- 
tive of the compound to which it was applied, and 
that their compound could not be more appro- 
priately designated; and they denied that they 
had in any manner or way whatsoever copied or 
colorably imitated complainant's alleged trade- 
mark, or that they had at any time misled the 
public or any member thereof , into supposing that 
the pancro-pepsin manufactured and sold by them 
was of complain ant's manufacture, or that any 
person could have been so misled. And they 
averred that even if the name "Pancreopepsine 
could be the subject of a lawful trade-mark, which 
they denied, it had not been infringed by them. 

Replication was filed, evidence taken, and hear- 
ing had. The circuit court held that complain- 
ant's contention touching unfair competition was 
not established, but that the trade-mark was valid 
and had been infringed, and granted an injunc- 
tion. ., . 

The case'was carried to the circuit court ot ap- 
peals, and William R. Warner, Jr., executor, was 
mad§ pV*JE . in, iiiaJje of William R, Warner de- 
ceased. The circuit court of appeals agreed Uia., 
there was no proof establishing unfair competition ; 
held that tlie rdi&opoiy clttinied «ou!d' noc be sus- 
tained; and reversed the decree of the circuit 
Court and remanded the cause with directions to 
dissolve the injunction and dismiss the bill. (ll<s 
Fed Rep 674. ) From that decree this appeal was 
prosecuted, and argued on a motion to dismiss as 
well as on the merits. 
Mr. Frank T. Brown for the appellant. 
Mr. Philip C. Dyrenforth for the appellee'. 
Mr. Chief Justice Fuller delivered the opinion 
of the Court. 

In the Trade-Mark Cases, (100 U. S., 82,) it was 
ruled that the act of July 8, 1870, carried forward 
into sections 4937 to 4947 of the Revised Statutes, 
was invalid for want of constitutional authority, 
inasmuch as it was so framed that its provisions 
were applicable to all commerce, and could not be 
confined to that which was subject to the control 
of Congress. But Mr. Justice Miller, speaking 
for the Court, said that the question — 

whether the 1 tr^de'rflark bears such 8 relation to commerce in 
general terms as to bring it within Congressional control, when 
used or applied to the classes of commerce which fall Within 
that control, is one which, in the present case, we propose to 
. leave undecided. 



That decision was announced at October term, 
A. D. 1879, and on March 3, 1881, an act was^ap- 
proved entitled " An act to authorize the registra- 
tion of trade-marks and protect the same." (21 
Stat, 502, c. 138.) 

By its first section it was provided that — 

owners of trade-marks used in commerce with foreign nations, 
or with the Indian tribes, provided such owners shall be domi- 
ciled in the United States, or located in any foreign country or 
tribes which by treaty, convention or law, affords similar privi- 
leges to citizens of the United States, may obtain registration of 
such trade-marks by complying with— 

certain specified requirements. 

By the second section, the application prescribed 

by the first — 

must, in order to create any right whatever in favor of the party 
filing it, be accompanied by a written declaration, that such 
party has at the time a right to the use of the trade-mark sought 
to be registered, and that no other person, firm, or corporation 
has the right to such use, either in the identical form or in any 
such near resemblance thereto as might be calculated to de- 
ceive; that such trade-mark is used in commerce with foreign 
nations or Indian tribes, as above indicated; * * * 

The third section provided that— 

no alleged trade-mark shall be registered unless the same ap- 
pear to be lawfully used as such by the applicant in foreign 
commerce or commerce with Indian tribes as above mentioned 
or is within the provision of a treaty, convention, or declaration 
with a foreign power; nor which is merely the name of the ap- 
plicant; nor which is identical with a registered or known trade- 
mark owned by another and appropriated to the same class of 
merchandise, or which so nearly resembles some other person's 
lawful trade-mark as to be likely to cause confusion or mis- 
take in the mind of the public, or to deceive purchasers. 

By the fourth section certificates of registration 
of trade-marks were to be issued, copies of which, 
and of trade-marks and declarations filed there- 
with, should be evidence "in any suit in which 
such trade - marks shall be brought in contro- 
versy;" and by section 5 it was provided that the 
certificate of registry should remain in force for 
thirty years from its date, and might be renewed 
for a like period. 

(Sections 7, 10, 11 and 13 are as follows: 

Section 7. That registration of a trade-mark shall be prima 
•facie evidence of ownership. Any person who shall reproduce, 
counterfeit, copy or colorably imitate any trade-mark registered 
hnder this act and affix the same to merchandise of substan- 
tially the same descriptive properties as those described in the 
Registration, shall be liable to an action on the case for damages 
for the wrongful use of said trade -mark, at the suit of the 
owner thereof; and the party aggrieved shall also have his 
remedy according to the course of equity to enjoin the wrong- 
ful use of such trade-mark used in foreign commei-ce or com- 
merce with Indian tribes, as aforesaid, and to recover compensa- 
tion therefor in any court having jurisdiction over the person 
guilty of sueh.wroiigfiil act; and courts of the United States 
51m>U have' original and appellate jurisdiction in such cases with- 
out regard to the amount in controversy. 

e2o. 10. That nothing in this act shall prevent, lessen, im- 
peach, or avoid any remedy at law or in equity which any party 
aggrieved by any wrongful use of any trade-mark might have 
had if the provisions of this act had not been passed. 

Sec. 11. That nothing in this act shall be construed as unfa- 
vorably affecting a claim to a trade- mark after the term of reg- 
istration shall have expired; nor to give cognizance to any court 
of the United States in an action or suit between citizens of the 
same State, unless the trade-mark in controversy is used on 
goods intended to be transported to a foreign country, or in law- 
ful commercial intercourse with an Indian tribe. . 

Sec 13. That citizens and residents of this country wishing the 
protection of trade-marks in any foreign country, the laws or 
which require registration here as a condition precedent to get- 
ting such protection there, may register their trade-marks for 
that purpose as is above allowed to foreigners, and have certifi- 
cate thereof from the Patent Office. 

.Obviously the act Was passed in view of the de- 
cision "thai the prjor act was. unconstitutional, aifd 
it' is,' therefore, strictly limited to lawful commerce 
with foreign nations and with Indian tribes. It is 
only the trade-mark used in such commerce that is 
admitted to registry, and it can only be infringed 
when'used in that commerce, without right; by art 1 
other than its owner. 

Reading the seventh, tenth and eleventh sections 
together, we find that the registration is prima 
facie evidence of ownership; that any person coun- 
terfeiting or colorably imitating any trade-mark 
registered under the act, is liable, in the Federal 
courts, to an action on the ease for damages for, 
and to injunction to restrain, its wrongful use, that 
is, the use of the simulated mark in foreign com- 
merce or with the Indian tribes; that the provi- 
sions of the act cannot operate to circumscribe any 
remedy which a party aggrieved by any wrongful 
use of any trade-mark might otherwise have had; 
and that the courts of the United States cannot 
take cognizance of an action on the case or a suit 
in equity between citizens of the same State— 
unless the trade-mark in controversy is ^'IfXlCeS 
to bo transported to a foreign country, or in lawful commciual 
intercourse with an Indian tribe. 



do. 






, 



- 



'Jf 







I Where diverse citizenship exists, and the statu 
tory amount is in controversy, the courts of the 
United States have jurisdiction hut ^ those 
conditions do not exist, jurisdiction can only ^be 
"attained when there is ^£™^£& 
merce with foreign nations or Indian J^M"™ 
is in such cases that the amount is declared bj sec 
tion 7 to be immaterial. The registered trade- 
mark must be used in that commerce, and is put in 
SSy by the use of the counterfeit or imita- 
tion on goods intended for such eommertf . as pre- 
scribed bysection 11. , .. mere CO un- 
Wecannotconcurmtheviewthattbem d 

terfeiting or imitating a registered ^trade , ^ 

amxingthesameisthe^oundomeac 

case, in the Federal courts gi ^^ or imita . 
it is the wrongful use of the c oun ^ 

tion that creates the **£***££ an a object 
the remedy in equity. And the in 
of the act forbid a construction that wou 
local commerce within its «»pe. fl 

In the present «^ ^,there- 
uisite amount, existed and the «rcu ^ .^ 

fore, had jurisdiction, * U Y* " ^Sraity of citizen- 
risdiction depended entire ly -on ■ J^J^ circuit 
ship, and hence that ^^^Lwevar, 
court of appeals was final. We to ' d 

that as infringement of -trademark reg 
under the act was charged, the averme . t iQ _ 
bul, though quite defective, were «««££££ 

vokethe i^f^^^^ttL, and 
case arose under a law of the unneti » 
will not, therefore, dismiss the apP^ 

The bill was filed in February, 1898, audi mus* 
treated as alleging that the trade-mark was then 
in use in foreign or Indian commerce, although tne 
proofs do not "make out that fact after December 

3 The 8 certificate of regfstry was , good fr' thirty 
years as matter of evidence, but when it ~ught 
«o enjoin the wrongful use it should ^ve been 
made to appear that the trademark was then he 
ing used in that commerce, and that that use was 
J e rferedwith,withcutright,h y defendaut And 

if the presumption of continuing use in such com 
merce flows tem the registry -verthele^ to 
make out infringement, it must appear that the 
Sfeged counterfeit or imitation was being used on 
merchandise intended to be transported to a or- 
eign country or in lawful commercial intercourse 
with an Indian tribe. 

We so held, in effect, in Ryder v. Holt, (128 U. b., 
535,) and we see no reason to depart from that rul- 

in** 

But the evidence in this record does not shorw 
that defendant used the name of its preparation 
on merchandise intended to be so transported,, 
while the sales proved were sales in the city of Chi- 
cago and northern district of Illinois, and there is 
nothing to indicate that the preparation was in- 
tended to be used in foreign or Indian trade... ■•;., 

In short, even if it were assumed that there could 
be a trade-mark in the use of the word "Pancreo- 
pepsine," which would be invaded by the use of 
the word " Pancro-Pepsin," the circuit court could 
not by virtue of the act, enjoin such use because 
it was not used in the commerce to which the act 

related. ., 

Our conclusion does not require us to consider 

the question of the constitutionality of the act, 

which, it may be added, does not seem to have been 

raise r1 . in the courts below. 
pevm affirmed. 




'77? 






COMMISSIONERS DECISIONS. 




Ex parte Bishop. 

Decided December 10, 1900. 

2. Same-Foreign Applicants-Treaty ™ u 

tween This Country -°J™S country which 
An applicant who is a resent o ; a Jtoag rf ^ 

by treaty affords ^™^™ h ° ade . mark ner e unless 
rr»SSSpa£ country and a foreign nation 
or Indian tribe. v„i„T*mmf 

S S AME-SAM E -SAME-G»EATER. PRIVH-EGES TO FOREIG^ 

T hXd^nSaw give* to £ ore f ers ~~»g£& 
in the matter of trade-ma* J^^S ^ade £• 
zens of this country, and mail cases ™e™-, trfb S* 

tween this country and a foreign «^"^ Vl ^ **!. 

4. SAME-TRADE BETWEEN 'THIS COUNTRY AND FOREIGN COUN 

.„„■_ authority of Congress. 

plying to other cases. 

5 Same-Seotions 3 and 13 Trade-Mark Act Construed- 

^ZlTTZ trade-mar, .aw construed and Held 
! that C doTot confer greater privileges upon foreigners by 
reason of treaties than are given to citizens. 

6 Same-Same-Terms of the Particular Treaty. 

Section 3 of the trademark act does not give to foreigners 
greater privileges than are given by ^ Pf*^*?*^ ' 
der which registration is sought, and in the case of the Inter, 
national Convention for the Protection of Industna Property 
no greater privileges are given to foreigners than to citizens 
of this country. 

On appeai. 

trade-mark for boots akd shoes. 
^Application filed June 1, 1903, No. 68,432. 
/'Mr. Fred W.< Bishop pro se. 
Alien, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the words 
" The Gibson Girl" as a trade-mark for shoes. 

The Examiner gives two grounds for his refusal : 
! (1) That the word "Gibson "is a surname and 
when used with the word " Girl " refers to the ar- 
tist Charles Eana Gibson/ and that this applicant 
cannot be permitted to make use of Mr. Gibson's 
'name for purposes of trade without his consent. 
(fix parte JR. I. Sherman Company , 101 0. G, 3105.) 
1 (2) That the applicant has noTalleged use of the 
mark in trade between this country and foreign 
nations or the Indian tribes. 

In regard to the first ground of rejection it is 
believed that the words would be understood as 
'referring to the type of girl made famous by the 
'drawings of Gibson and that this meaning would 
so present the name of the artist as to make such 
use fa ,; within the principle of the case cited, and this ( 
Examiner's refusal of registration on this ground 
is thought to be right. 





or amoQ; 
so limitec 



: the severar States, or with the Indian tribes.. I£ not 
, it is in excess of the power of Congress. 



Since the Constitution does not "give •Congress 
authority to regulate commerce except^ between 
this country and foreign nations or Indian tribes, 
or between the several States, it is clear thatut 
cannot derive that authority from, a mere treaty . 
between this country and a foreign nation. The 
authority of Congress is derived from the Consti;. 
tution alone. 

In the present case it is clear that if the appel- 
lant uses his mark in trade in this country at all it 
may be entirely within this country and not be- 
tween this country and Canada., where the appel- 
lant now resides. Before he can fce regarded as 
having a prima facie right to registration under 
the Supreme Court's decision it must be stated 
that the mark has been used in commerce between 
the two countries or with Indian tribes. 

In view of this limitation upon the authority of 
Congress the trade -mark statutes must be con- 
strued as requiring in all eases trade between this* 
country and foreign nations or the Indian tribes. 
The aet of March 3, 1881, provides, (section 1 :) 

, That the owners of trade-marks used in commerce with for 1 
eign nations or with the Indian tribes, provided such owners 
Shall be domiciled in the United States or located in any foreign 
country or tribes, which, by treaty, convention, or law, affords 
similar privileges to citizens of the United States, may obtain 
registration of such trade-marks by complying with the follow- 
ing requirements. 

Under the terms of this section the words " used 
in, commerce with foreign nations or with the In* 
d^ian tribes " apply equally to foreigners and to citi- 
zens of this country. 

Section 2 of the act requires that the application 
for registration be accompanied by a verified state 1 - 
ment "that such trade-mark is used in commerce 
with foreign nations or Indian tribes " and contains 
no exception in case of foreign applicants. 

If the above sections stood alone, there would be 
no ground for dispute, and the only ground for ar- 
gument arises from sections 3 and 13. 

Section 3 of this aet provides that— 
* * * no alleged trade-mark shall be registered unless the 
same appear to be lawfully used as such by the applicant in 
foreign commerce or commerce with Indian tribes, as above 
mentioned, or is within the provision of a treaty, convention; or 
declaration with a foreign power, 

"and section 13 thereof is as follows: 



As to tne second ground of refusal the appel- 
lant contends that it is not necessary that he 
should have trade between this country and a 
foreign country, since he is a resident of a foreign 
country which by treaty affords trade-mark pro- 
tection to citizens of this country. He contends, 
in effect, that the trade-mark law authorizes reg- 
istration by two classes of persons: 
g (1) Those residents of this country haying trade , 
iSsdtb foreign countries or the Indian tribes, and 

(2) Those foreigners residing in countries, hav- 
ing treaty relations with this country as to trade- 
marks. 

If this contention is sound, foreigners are given, 
greater privileges that citizens of this country, 
since they are relieved of one of the conditions 
necessary to registration by a citizen. They 
wfiuM. be, moreover, relieved of the very condition 
which the Supreme Court has said is necessary to 
lenS validity to any registration in this Office, fg. 
the Trade-Mark Cases (100 U. S., 82) the Supreme 
Court said: 

"When, therefore^ Congress undertakes to enact a law, which 
can only be valid as a regulation of commerce, it is reasonable 
to expect to find on the face of the law, or from its essential 
nature, that it is a regulation of commerce with foreign nations. 

_" \ .i. Fr, .._..__ :i.u .k. t. ..!;,... t.;imo TF Tint 




That citizens and (residents of this country, wishing the pro- 
tection of trade-marks in any foreign country, the laws of which 
reel aire registration here as a condition precedent to getting 
such protection there, may register their trade-marks for that 
purpose as is above allowed to foreigners, and have certificate 
'tSsfeof frOin the Patent Office. 

■ •' This-section suggests that foreigners may have 

been granted some privileges not possessed by citi- . 

zens, and it is apparent from an examination of the 

statutes that the foundation for the suggestion 

must be found, if found at all, in section 3. The 

remaining sections clearly give to foreigners no 

greater privileges than to residents of this country. 

The above-quoted portion of section 3 appears 
to specify two conditions, either one of which will 
justify registration. The first is that the appli- 
cant shall use the mark in trade between this coun* 
try and a foreign country and contains no limita- 
tion as to the residence of the applicant. It would, 
taken alone, permit registration by a foreigner 
residing in a country having no treaty relations 
with this country; but clearly that was not the in- 
tention of Congress. The second condition is that 
it shall be "within the provision of a treaty, con- 
vention, or declaration with a foreign power." 
This must either have reference to other sections of 
the statute specifying the conditions under which 
registration may be made by reason of treaty 
rights or must mean that the terms of the particu- 
lar treaty under which registration is requested 
are to control. Under the first construction use 
in trade between this country and a foreign coun- 
try or Indian tribes is necessary. Under the sec- 
ond construction it does not purport to accord 
greater privileges than are accorded by the par- 
ticular treaty under which registration is asked. 

Article 2 of the Convention for the Protection of 
Industrial Property, to which Great Britain is a 
party, is as follows: 

The subjects or citizens of each of the contracting States shall 
enjoy, in all the other States of the Union, so far as concerns 
patents for inventions, trade or commercial marks, and the com- 
mercial name, the advantages that the respective laws thereof 
at present accord, or shall afterwards accord to subjects or citi^ 
zens. In consequence they shall haVe the same protection as 
the latter, and the same legal recourse against all infringements 
of their rights, under reserve of complying with the formalities 
and conditions imposed upon subjects or citizens by the domes- 
tic legislation of each State. 

This article makes it clear that foreigners have 
no greater privileges here than the citizens of this 
country have. They are simply given equal privi- 
leges with citizens> There is no treaty giving to 
residents of Canada greater privileges in the mat- 
ter of recording trade-marks in this country than 
are given to residents of the United States. Use of 
the mark in trade between this country and a for- 
eign country or Indian tribes is necessary in the 
case of citizens, and it is equally necessary in the 
case of residents of Canada. 

The suggestion in United States, ex relatione 
Buffalo Pitts Company, v. Duell^B 0. G., 1491) 
that applicants under a treaty are not required to 
show use in trade between this country and a for- 
eign country or Indian tribes has been given due 
consideration, but cannot be given controlling 
weight. The question was not there before the 
court for decision, and presumably was not argued. 
For the reasons above stated that construction of 
the law is believed to be contrary to the provisions 
of the statutes as worded and contrary to the in- 
tent of Congress. In enacting the trade-mark law 
of March 3, 1881, Congress was attempting to bring 
the subject within the constitutional limitations 
stated by the Supreme Court in the Trade-Mark 
Cases, and it is not to be presumed that it intended 
in any case to omit the conditions found by that 
Court to be necessary to validity. 

The decision of the Examiner of Trade-Marks is 
affirmed. 



3JL 










COMMISSIONER'S DECISIONS. 



\iff- 





EX PARTE WlLLARD CHEMICAL COMPANY. 
Decided December 10, 190S. 
1 Trade-Marks-"Velva" Anticipated by "Velvet." _ 

The word " Velva" refused registration as a trade-mark m 
view of the words "Velvet" and "Velvet-Skin" previously 
registered for the same goods. 

2. Same-Toilet Soap and Laundry Soap in the Same Class. 

The use of a mark by one person upon laundry soap will 
1 prevent the subsequent registration of that mark to another 
upon toilet soap, since there is no clear line of distinction be- 
tween the two kinds of soap. 

3. Same-Registration by Owner-Lioense by Registrant In. 

effective. . 

The fact that a registrant may not object to the subsequent 

registration by another is not of consequence, since the right 

to registration cannot be conferred by license from the rea_ 

owner. The law authorizes registration by the owner alone 

On appeal. - 

trade-mark for TOILETfSOAP. 

Application for registration filed December 31, 
1902, No. 67,348. 

Messrs. Wright, Brown & Quiriby for the appli- 
cant. 
Allen, Commissioner: 

This is an appeal from the decision of the Ex- 
aminer of Trade - Marks refusing to register the 
word "Velva" as a trade-mark for toilet soap in 
view of prior registrations to Procter & Gamble, 
December 19, 1882, No. 9,884; Reed & Carnrick, 
March 8, 1892, No. 20,812; Anderson, April 11, 1899 ) 
No. 32,705. 

The mark covered by the first of these registra- 
tions is the word " Velvet," and in the statement 
therein it is said: 

The class of merchandise to which our said trade-mark has 
been appropriated is soap, and the particular description of 
goods comprised in such class is a superior article of our own 
m anufacture for laundry and general purposes. 

The second registration covers the mark "Vel- 
vet-Skin" for toilet soap, and the third covers the 
words " Velvo-Silvo " for soaps. 

Any of these registrations is sufficient to war. 
rani the refusal of registration in the present case. 
The words "Velvet" and "Velva "are so nearly 
alike as to be apt to cause confusion in the trade. 

The app&llant has filed a letter from the regis- 
trants, Procter & Gamble, saying that they have 
no objection to the use by the appellant of the' 
word "Velva" upon toilet soap, although' they do 
object to its use upon laundry soap, for the reason 
that it is so much like their mark "Velvet." "The 
consent of the registrants is not of consequence,' 
except as it may bear upon the question of iden- 
tity of application of the mark when used upon 
toilet soap and laundry soap, and that the'use of 
the same mark upon them will not cause conf usiori. 
The right to registration cannot be conferred by 
a license from the real owner, since the, law au- 
thorizes registration by the owner alone. Regis- 
tration could be granted to this appellant only 
upon the conclusion that its trade-mark right is 
entirely independent of the right of Procter 1 & 
Gamble. This independence is not found either 
in the word chosen or in the goods upon which it 
lis placed. Both parties use the mark upon soap, 
and there is no clear line of distinction between 
toilet soap and laundry soap. Some soaps are in- 
tended exclusively as toilet soaps and others are 
intended exclusively as laundry soaps; but there 
are still others intended for either use. It must be 
held that the goods are of substantially the same 
descriptive properties, although the specific goods 
in one case are said to be laundry soaps and in the 
other toilet soaps. 

The decision of the Examiner of Trade-Marks h 
affirmed. 





./af,?f 7 ft'- 



Ex parte Abraham. 

Decided November 0, 1903. 

Laisels— Artistic Production. 

Where a label is made up of printed matter together with 
circles and scroll work which are separately old in t lie printer's 
art, but which are. so combined as to produce an artistic effect, 
Held that the label is registrable. 
On appeal. 

label for medicine. 
Application for registration filed September 18, 
19Q§J5o, 4.900. | 

Mr. Charles- E. Abraham pro se. 

Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks and Labels refusing to regis- 
ter a label for medical tablets entitled "64." 

The ground of refusal is that the label is not an 
artistic production and involves merely the ex- 
pected skil} of the type-setter. (Ex parte Bahl- 
wiv^H O. G., 1700, and ex paite Booth, 101 0. G.j 
219.) The Examiner says: 

They involve merely circles and scrollwork of the most com- 
mon kind, such as may be found in the usual printing establisn- 
ment. 

While it may be true that the various forms of 
type used by this appellant and the circles and 
scrollwork appealing in the label are separately 
old in the printer's art, they have been so com- 
bined in the label presented as to produce an artis- 
t ic effect. It is difficult in many cases to say where 
the skill of the printer ends and the original work 
of the designer begins; but it is believed that the 
present label exhibits something more than the 
skill of the printer. 
The. decision of the Examiner is reversed. 




Ex parte LEVI S. RICHARDSON. 



S*A^^ 4/9^3 




This appeal is taken from the action of the 
aSSgSriSeriorTto;^ labelS > refUSing t0 - "lister an 

+™ t, * Th ? all ®eed label consists, of an ornamental border 
two hearts pierced by arrows, and the words "A sure cure for' 
love « The application for registration does not describe 

about °?^°/? 1 ? h - + it H t0 be W lied > ^d there is no?hSg 
about the label itself to indicate what the article is 

authors S 6 Exam ^ er TD lia s refused registration on the' 



F. I. All 



en, 



December 11, 1903. 



Commissioner. 




( 



Ex parte SAMUEL Y/ESTHEIKER - MSD. Vol 78, page 242. 



yw^ 









^x*,. 'u**-, Gfrys'd, 



This appeal is taken from the action of the 
Examiner of trade-marks, requiring that the application 
be limited to a single class of merchandise. 

The merchandise covered by the application 
consists of fruit brandy, whiskey and gin, and the 
Examiner says that they can not be included in one 
application, since they are not goods of substantially 
the same descriptive properties. Ex parte Faxon, 103, 
0. G., 891. ex parte Tallmadge ,104, 0. G. 2443. 

For the reasons stated in the opinion filed to- 
day in the case of Vanden Bergh & Co. v. Belmont Distillery 
Co., it is thought that the decision of the Examiner of 
trade-marks is right, and it is affirmed. 



December 11, 1903. 



Y. I. Allen, 

Commissioner, 



_J 



COMMISSIONER'S DECISIONS; 







Vakdeh Beroii k Company ». Belmont Dis- 
tillery Company. 

Decided December il, 19CS. 
i. Trade-Marks— Priority— Whisky and Gin. 

Where the issue is a trade-mark for whisky and it appears 
that Vanden Bergh & Co. have used it only on gin, Held that 
the decision must be in favor of the Belmont Distillery Co. 
2. Same-Whisky and Gin-Goods Not op the Same Descrip- 
tive Properties. 
Gin and whisky are not goods of substantially the same de- 
scriptive properties, and a single trade-mark right does not 
include the use of the mark upon both. 
8. Same— Same— Same— Taste and Odor Different. 

Whisky and gin are liquids of substantially similar alco" 
holic contents, but they differ in the properties of taste and 
odor, and in this class of merchandise the qualities of taste 
and odor rise into such great importance that they are the 
foundation of valuos. 

Appeal from Examiner of Interferences. 
trade-mark for spirituous liquors. 

Application of Vanden Bergh & Co. filed Feb- 
ruary 20, 1901, No. 62,735. Registration of Belmont 
."Distillery Co. dated April go, 1889, No. 16,504. 

Messrs. Briesen <£• Knamh for' Vaiideri Bergh &- 
Co. 

Messrs. H. B. IVillson & Co. for Belmont Distil- 
lery Co. 
Allen, Commissioner: 

This is an appeal by Vanden Bergh & Company 
from the decision of the Examiner of Interferences 
awarding priority of adoption and use of the trade- 
.hiark in controversy to the Belmont Distillery 
Company. 

The issue is the representation of a bell as a trade- 
mark for whisky. Vanden Bergh & Co. show by 
their evidence the use of this mark upon gin since 
18G8. The Belmont Distillery Company has regis- 
tered this mark for whisky by registration dat3d 
April 25, 1889. It has produced no testimony as to 
the date of adoption and use of the mark, and in 
this respect rests upon the case made by its regis- 
tration. It is argued by Vanden Bergh & Co. that 
this is insufficient to prove the right of the Belmont 
Distillery Co. to the use of this mark. They ar- 
gue that this is nothing more than an ex parte affi- 
davit, tod that i,t can be of no value whatever and 
cannot be used to prove' the fact of adoption and 
use, and that as this certificate Of registration is 
based upon ex parte statements such registration 
could be of no greater effect than such statements, 
and that the question of priority is therefore clear 
upon this failure of evidence on the part of the 
Belmont Distillery Company. 

This argument appears to overlook entirely the 
first clauseof section 7 of the act of March 3, 1881, 
the present statute controlling the Federal regis- 
tration of trade-marks, which says that "registra- 
tion of a trade-mark shall be prima'facie evidence 
of ownership." It may thus be clearly seen that 
a registration effected by a course of procedure in 
accordance with the provisions of the statute of 
1881 becomes forceful enough to amount to prima 
facie evidence of ownership, and this, of course, is 
sufficient until overcome by testimony. 

In this case by virtue of its registration of 1889 
the Belmont Distillery Company is prima facie 
owner of the trade-mark right to use this mark 
upon whisky. The argument on behalf of Vanden 
Bergh & Company is principally devoted to a dis- 
cussion of the identity of gin and whisky, whereby 
it is argued thatthe adoption and useof this mark 
upon gin should be considered as a proper founda- 
tion for their claim of the mark in its use for whisky, 
although It is not shown that they have ever used 
it upon whisky. Two witnesses were called in be- 
half of the Belmont Distillery Company, and the 
witness Jordan was asked: 



Q. (i. Are whisky and gin recognized by the liquor trade : 
one and the same liquor? . 

A. In appearance there is as much difference between gm ana 
whisky as there is between charcoal and chalk. In taste, Uu're 
is as much, I would say, as between vinegar and milk. 

Q. 7. Please state whether or njt your customers regard gin 
and whisky as one and the same liquor. 

A. They could not regard them the same. There is such a 
vast difference in taste and flavor. 

Q. 9. Do whisky and gin taste alike ? 

A. No, sir. 

Q. 10. Could you be deceived into using whisky thinking it 
was gin » 

A. Not without my sense of taste was confused and I was 
blindfolded. 

The witness Hartnett testifies in answer to— 

Q. 4. Are whisky and gin recognized by the liquor trade as 
one and the same liquor ? 

A. I have been in thf> business thirty years, and I have never 
known them to be considered the same kind of liquors. 

Q. 5. Please state whether or not. your customers regard gin 
and whisky as one aud the same liquor. 

A. I never saw one that did. 

Q. 7. Do whisky and gin taste alike ': 

A. Not a bit. 

The question presented hy M this case is the ques- 
tion of the scope of a trade-mark, and in its appli- 
cation here, since the identity of the mark is con- 
ceded, the question for consideration is simply 
whether the right acquired by Vanden Bergh & 
Co.to use this mark upon gin is a right sufficiently 
wide to include the use of the" same mark upon 
whisky. I hare had occasion in ex parte Faxon 
(103 O. G., 891), to point out what seems to be the 
rule by which the question of scope of a trade- 
mark may be determined, and referring to section 
7 of the act of 1881, which provides a remedy for 
infringement Of trade-mark, I called attention to 
the fact that if infringement of this section, which 
prof ides that- 
liny person who shall reproduce, counterfeit, copy, of colorably 
imitate any trade-mark registered tinder this act and affix the 
same to merchandise of substantially the same descriptive prop- 
erties as those described in the registration shall be liable to an 
action on the case for damages for the wrongful use of the 
trade-mark at the suit of the owner thereof, 

is limited to those who affix the mark to "mer- 
chandise of substantially the same descriptive 
properties." This is a definition of the scope of 
the trade-mark which is intended to be secured by 
one registration under this Federal statute of 18S1 , 
since it is not to be supposed that the registration 
provided for in this statute was to be broader than 
that which could be protected from infringement 
under section 7 of the same statute. It is cletr 
that any greater breadth than that which can be 
protected from infringement would be a right with- 
out a remedy, and no such construction of this 
statute seems warranted by the consideration of 
the whole statute taken together. 

I had occasion to say further in that case: 
, The language used iu section V of this act bases identity of 
»?,"&?, a 1 t i on U .P<™ the. only fixed and permaneni chara c ter?st?c 
a\ tulubls as a test M idemity-tUat is, upon intrinsic properties 
In this case I am obliged to conclude that whisky 
and gin are not "merchandise of substantially 
the same descriptive properties." but that they are 
different in their descriptive properties. It is noted 
that these are both liquids of substantially similar 
alcoholic contents, and that to distinguish between 
them we must have recourse to their properties of 
taste and odor. Nevertheless, in this class of mer- j 
chandise the qualities of taste and odor rise into 
such great importance that they are the founda- 
tion of values, and it is v?e\\ known Jthat the con- i 
siderations of taste and odor are absolutely deter- 
minative in the choice of these goods for the pur- 
pose of their consumption. 

The testimony of the witnesses Jordan and Hart- 
nett in respect to this matter, founded upon their 
experience, is convincing. Taking into considera- 
tion all the facts in this case, I am of the opinion 
that whisky and gin are not merchandise of sub- 
stantially the same doscriptive properties, and that 
the adoption and use of the mark upon gin created 
no right sufficiently broad to interfere with its sub- 
sequent use upon whisky, and that Vanden Bergh 
& Company have shown no right to its use upon 
whisky to overcome the prima facie case made 
by the Belmont Distillery Company by the pro- 
duction of its registration of April 2"", Issii. 



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/0~f.(Ff?-**6> 




COMMISSIONER'S DECISION 



Ex parte Cross. 

Decided December IS, 190-3. 

1. Trade-Mark-The Word "Cross"— Too Generic to Eescribe' 
a Particular Form of Cross. 

As the word "cross" is so wide in its application 1 ' as to be 
generic to widely-differing figures, Held that it is inadequate 
to serve as a description of the form of any particular' 'sbeci- 
man within its class. 

2. Same — Geseric Description of Particular Mark — Not- 
Warranted by Law. 

Where a trade-mark is described by a word which has so- 
wide a Significance as to be generic of many forms or figures 
belanguig to the class of which the particular form or figure 
shown in the facsimile is an example, Held that the descrip- 
tion does not comply with the requirements of the trade-mark 
statute, (section 3.1 which provides that there must be re- 
corded in the Patent Office a description of the trade-mark. 

3. Same-Same-Applicant's Name— Not Warranted by Law. 
Where the name of an applicant is the same as the word 

used to describe genetically a class of objects and the word 
without limitation is registered on the plea that the particu- 
lar object selected for registration is described thereby, Held 
that such registration should not be permitted, as it would be 
contrary to the provisions of section 3 of the act of March 3 
isn, that no alleged trade-mark shall be registered which is 
merely the name of the applicant. 

On petition. 

trade-mark for boots and shoes. 

Application for registration filed September 97 
1901, No. 64,188. 

Mum. Crosby & Gregory for the applicant. 
Allen, Commissioner: 

. f ^ hiS i 8 t PetUi0n from the aetion ° f «"> Examiner 

h lllf , kS rea - uirin S «» applicant to describe 

htstrade-markwithasmuchparticalarityassliown 
m tne facsimiles. 

The.applicant states in his specification- " 
St* trademark consists of the arbitrary symbol of a cross. 
• -4 ^csunile shows a, fl-iire. which is said by the 
i^a^ner to be a Maltese cross, and he has re- 
quired that it should be described as consisting of 
the representation of a Maltese cross, in view of 
that portion of the trade-mark act which requires 

Pat^oTce- 11 * ^ ° aUSe t0 be reC ° rded * «*» 

» description of the trade-mark itself, with facsimiles thereof 
™S t eC ° r .M^ Ce With this re q^ement the appli- 

Sd ton- ^ acs i milesof his mark > bnt ** ^ 

' cross " tlT ^ ° therWiSe than by caUin £ ft a 
shn,?w V? hlS ar S ame at contends that he 

rtT^ Ued UP0Q *? deflQe » ^e closely 

The word "cross" is a term which includes a 

Jje number of dtotinot Agar* As was pointed 

out by Commissioner Butterworth in ex parte 

# a ™tton Disinfectant Chemical Works, (27 MS. 

this description were allowed ?he effect w^S" 8 ' that if 
least eleven distinct devices by a singled elation C ° T<Sr &t 



In the argument of the petitioner it is denied 

th^?<? Uth °- itj ° f ^Standard Dictionary] 
that t hls figure is even a Maltese cross, which he 
states to consist of four arrow-heads meeting at 
the ir common points. It would be quite a* close 
a descnption of the figure presented in £££% 
call it a square," at each corner of which an acute 
*edge -shaped section had been removed It is 

smf^Jh* fr ° m ^ ins P ection of «« drawing that a 
square having portions of various shapes removed 

asltT?i, rSmiglltpreSentap P earance3a «east 

well known \ ° ne ilIustrated here as the various 
well-known forms of crosses. 

I am obliged to conclude that the word "cross" 

« the " ider SigDiflCanCe than fi ™ "SL 
be no?ed Ah^T appearanee to *** eye. It is to 
and tW S ? e a T e ° f tMs a PPlicant is Cross, 

secured bv ^ ' Cr ° 8S " Without limitati ™ * 

secured by th ls registration he will have effected 

by this means the registration of his name al 

' MaTclV SSlTr 3 !7 SeCti ° n 3 ° f th ^of 
Marcn 3, 1881, that no alleged trade-mark shall be 

registered which is merely the name of the appS 
I But if it is arg . ued that thig n 

i llZTi a °L this app,icant ' should be re « 

here on the th T?? , by the %ure "titrated 

IveoneTo 7t hatth6asate and tb * name 
are one, it cannot be overlooked that the name 

SdeTn its annf^ ° f tMS flS ' Ure fe ™-o 
wiae in its application as to be generic of a lot of 

tlaTmanffT ^ * mUSt b « -cSed 
tHat many words in common use cover objects of 

Z^toZ^T* ap P e « - to °be j ina d °e! 
quate to serve as descriptions of the form of any 

It must be held that the applicant has failed to 
describe his mark with the particularity requtea 
bythe statute, and for this reason the petition's 





\Ji 



'iy^7. &f- -s^ f ^ 



DECISIONS OF THE U. S. COUKTS. 



* > 



Supreme Court of the United 'States. 

La Republiqjk Frani.aise et al'.-'v, Saratoga 
Vichy Sprixi; Company. 

Decided December 7, 190S. , ' • ■ i 

1. Trade-Marks— "Vichy "— Generic Word. 

The word "Vichy" lias by use become generic anil indica- 
tive of the character of the water and cannot be regarded as a 
trade-mark. 

2. Same— Same— Laches of Plaintiff— Descriptive Word. TJ 

Held that the owners of the French Vichy springs have no 
exclusive right to the use of the word "Vichy," since for the 
past thirty years they have permitted others to use that word 
in trade upon various waters, both natural and manufactured, 
having some similarity to that of the French springs, and 
therefore the word has become descriptive. 
8. Same— Geographical Names— Secondary Significance. 

Geographical names often acquire a secondary signification 
indicative not only of the place of manufacture or production , 
but of the name of the manufacturer or producer and the ex- 
cellence of the thing manufactured or produced, which en- 
ables the owner to assert exclusive right to such name as 
against every one not doing business within the same geo- 
graphical limits, and even against them if the name he used 
fraudulently for the purpose of misleading buyers as to the 
actual origin of the thing produced or of palming off the pro- 
ductions of one person as those of another. 
1. Same — No Infringement. 

Held that the defendant has not simulated the label of the 
plaintiff or attempted to foist its goods upon the public as the 
goods of the plaintiff. 

5. Same— Treaty Construed— Rights of Foreigners. 

The treaty of June 1 1 , 1887, between this country and France 
In regard to trade-marks did not put citizens of France upon 
a more favorable footing than our own citizens or exempt them 
from the ordinary defenses that might be made by the party 
prosecuting. They were merely entitled to sue as if they were 
citizens of this country. 

6. Suit by Government— Foreign Government— Doctrine of 

Laches. 
Quo;re whether the rule that the doctrine of laches has no 
application to the neglect of the Government to pursue tres- 
passes upon its rights applies in the case of foreign gcnteirn- 
ments suing in the courts of this country. 

7. Same— Same— Suit on Behalf of Individual— La«ihes. 

Where the Government is suing for the use and benefit of 
an individual or for the prosecution of a private and proprie .. 
tary instead of a public or government right, the ordinary rule 
of laches applies in full force. 

8. Same-Government Nominal Party-Laches. 

Where the French Republic is nominally the plaintiff, but ' 
the real party in interest is a company leasing the springs 
from the Republic, Held that the laches- of that company is ' ' 
sufficient to prevent granting the relief sought. 
On certiorari to the United States Ch-duif Court 
of Appeals for the Second Circuit: " ' 

STATEMENT OP TEE 1 CASE.' 

C^,rr S J ! f>. a £ m .i n equity brought in the Circuit 
tr?nt rS w he ?. mted ytates f °f the Northern Dis- 
owne? ,£f t T n° rk ' by ^S, ^ rench R epu°hc, as 
mint Th , Co^Pasme Ferniiere del'Ftablisse- 
v£hVr£ * d f Vichy ' (hereinafter termed the 
T?™ 7.1 Com P. an y' as lessee; of the springs of Vich v, 

nanv fo? g rT St *^ S^ga Vi <*y Spring Com- 
pany, for the unlawful use of the word "Vichy " 

tra^n I the 5 laintiffs a * a commercial naWor 
thn !wL £' ^ nd a PP rc -P«ated for the waters of 
nature, Tnr.t 11 *' 7^eh are drawn from a certain 
natural spring at Saratoga, N. Y. 

been^M : +£ hat l or ^3 years ,uin eral water has 
o *?\%£Jl UO y B h oxl } th « world under the name 
1;7' and that such' name has come-to- de- 
thlrtt PI ° f J water - nai "ely, alkaline, non.ca-: 
tnartic carbonated water, and does not stand for 

nptpp^M °^ any one ?P rin ei that defendant has 
never sold vichy as and for that of the plaintiffs, 
w«t«? i?i lance thereto, but has so labeled its 
water that the purchaser shall' know that it is a 
natural mineral water of Saratoga; ami' that plain- 
tiffs claim is stale. i • 




The bill was dismissed by the'eircuit tjourt upon 
the ground that plaintiffs had no exclusive right 
to the use of the word " Vichy," and that defend- 
ant had never been guilty of ah attempt to palm 
off its waters as the imported article. (99 ied. 
Rep., 733.) On appeal, the court of appeals re- 
versed the decision of the circuit court, and grant- 
ed an injunction against the, use of one particular 
label, or "any other label in which the place of 
the origin of the water is not as plainly and promi- • 
nently made known as the fact that it named 
'Vichy.'" (107 Fed. Rep., 459.) v - 

Plaintiffs thereupon applied for a writ of certi- 
orari, which was granted. Defendant made no 
similar application, but acquiesced in the decree 
and discontinued the offending label. 

Mr. Chas. Bulkley Hubbell and Mr. Archibald 
Cox for the appellants. 

Mr. Edgar T. Brackett for the appellee. 

Mr. Justice Brown delivered the opinion of the 
Court. 

This suit is brought to vindicate the right of 
plaintiffs to the exclusive use of the word " Vichy " 
as against the defendant, and incidentally as 
against all persons making. use of the word to de- 
note a water not drawn frfrnji the springs of Vichy, 
now owned by the French.Republic and leased to 
the Vichy Company. 

The title of the French Republic to the springs 
of Vichy, a commune of France, is clearly estab- 
lished. Known for their medicinal qualities since 
the time of the Roman Empire and originally be- 
longing to the feudal lord of Vichy, they were 
sold by him in 1444, together with the castle and 
its dependencies, to Pierre, Duke of Bourbon, in 
whose family they remained until 1531, when, for 
the treason of the Constable of Bourbon, they 
were confiscated by. Francis I, and . became the 
property of the crown, in whose possession, they 
remained until 1790, when they were united to the 
public domain and v af£erward passed to the 
French Republfo arid its successors, and were op- 
erated directry by the officers of the state until 
June, 1853, when they were leased for a fixed rental 
to a firm of which the Vichy Company is the suc- 
cessor. The bottling and exportation of the wa- 
ters was commenced before 1716, and in 1853 they 
began to be exported directly to this country, the 
shipments in 1893 amqunting to about 300, OpQ bot- 
tles. For many years they have been bottled and 
sold all over the world. 

The rights of the defendant originated from a 
spring discovered in 1872 in the township of Sara- 
toga Springs, N. Y., the waters of which, though 
differing from the water of the Vichy spring both 
in ingredients and taste, have a certain resem- 
blance to them which suggested the use of the 
word " Vichy." The water began to be bottled 
and sold in 1873 by the owners of the spring, and 
in 1876 became the property of the defendant, 
"which has since sold the water, using various bot- 
tles, circulars and labels, containing more or less 
conspicuously displayed the word " Viehy," 






w 



1. As the waters of Vichy had been known for 
centuries under that name there is reason for say- 
ing the plaintiffs had in 1873 acquired an exclusive 
nght to the use of the word "Vichy" as against 
every one whose waters were not drawn from the 
springs of Vichy, of at le&s't, as observed by a 
I reach coiirt, "from the same hychwaphical re- 
|ion v. hich may be called generally the basin of 
Vichy." 

_ True the name is geographical; but geograph- 
ical names often acquire a secondarv signification 
indicative not only of the place of manufacture or 
production, but of the name of the manufacturer 
or producer and the excellence of the thing manu- 
factured or produced, which enables the owner to 
assert an exclusive right to such name as against 
every one not doing business within the same geo- 
graphical limits; and even as against them, if the 
name be used fraudulently for the purpose of mis- 
leading buyers as to the actual ori-in of the thin- 
produced, or of palming off the productions of one 
person as those of another. (Elgin National 
Watch Company v. Illinois Watch Company, 179 
Li. S., 005; Newman v. Alvord, 51 ]>T. X., 189- Lee 
v. Haley, 5 Ch. App., 155; Wotherspoon v. Carrie, 
■U It. 5 H. L., 508; Braham v. Beachim, 7 Ch. 
Div., 848; Thompson v. Montgomery, 41 Ch. Div 
So; Seixo v. Provezendo, L. R. 1 Ch. App.', 192.) ' 
In a French ease arising in this connection, and 
brought by the Vichy Company agains- a rival 
company owning two springs in the same neigh- 
borhood, complaining that by the composition of 
its name and the arrangement of its labels, as well 
as by the tenor of its different appeals to the pub- 
I he the company owning these springs had created 
a damaging confusion between the two companies 
and their product, it was held that, while the rival 
company had a right to the use of the word 
Vichy," it was bound to state the name of its 
springs, the place where they were located as "near 
Vichy " in letters identical in height and thickness 
as those of the word Vichy in their advertisements 
and labels, and also the name of their springs in 
letters at least half their size-in other words, it 
was bound to adopt such precautions as would 
tally apprise the public that it was not purportin"- 
to sell the waters of the original Vichy Company 
though being in the same basin, they were entitled 
to use that designation. 

8. A serious difficulty in the way of enforcing an 
exclusive right on the part of the plaintiffs to the 
use of the word Vichy is their apparent acquies- 
cence m such use by others. For thirty years the 
defendant, the Saratoga Vichy Company, has been 
openly and notoriously bottling and selling its 
waters under the name of the " Saratoga Vichy " 
until its competition has become an extremely- se- 
rious matter to the plaintiffs, whose importations 
began in 1853 with only 816 bottles, which b, I'e 
year 1890 had increased to 298, 500 bottles. The r 
tire shipment of the Vichy Company- amounted in 
1890 to nearly ten millions of bottles. Under such 
circumstances, and in view of the further facts that 
other waters were openly manufactured and sold 
in this country under the name of Vichy, and that 
=i manufactured water was dealt out by the gla=s 



under that name in innumerable soda-water foun- 
tains throughout the country, as shown by the rec- 

l fintiff, 1 w aSe ' f im P° ssible t0 s »PP°se that the 
plaintiffs were not aware of these infringements 
upon their exclusive rights. It argues mucli more 
than ordinary Indifference and inattention to sup. 
pose hat the large amount of this rival Water could 
be advertised and sold all over the' cotatry with- 

natmnlW I* f dge ° f theh ' agentS > wh ° ™uld 
natuially be active in the protection of their own 

fact, they had allowed the name to become gen- 
eric and indicative of the character of the water. 
With all these facts before them, and with the 
yearly increasing sales and competition of the de- 
fendant company, no move was made against them 
w^ Z ST \ y - fl A Ve , yeai-s > and ™til 1898, when this bill 
7*1 r* ;\ clearer ca£e of ] aches could hardly 
exist. (Saxlehner v. Eisner, 179 TJ. S 19 30) 

It 1S said, however, that the doctrine'of laches 
has no application to the neglect of the Govern- 
ment to pursue trespasses upon its rights, and that 
the French Republic is entitled to the benefit of 
that rule. It is at least open to doubt whether 
the maxim nullum tempus, applicable to our own 
Government, can be invoked in behalf of a foreign 
government suing in our courts. The doctrine is 
one of public policy, and is based upon the assump- 
tion that the officers of the Government mav be 
so busily engaged in the ordinary affairs of state 
as to neglect a vindication of its interests in the 
courts. Whether this exemption can be set up by 
a foreign government in the prosecution of suits 
against our own citizens-in otiier words, whether 
the latter are not entitled to the benefit of the or- 
dinary defenses at law, is a question which does 
not necessarily arise in this case, and as to which 
we are not called upon to express an opinion. 

However this may be, it is clear that the rule of 
nullum tempus qannot be invoked in this case 
While the French Republic is nominally the plain- 
tiff, its interest in the litigation is little, if any- 
thing, more than nominal. For fifty years it has 
s ceased to operate these springs through its own 
i agents, since inlS53thethenEmperorof theFrench 
: leased them to the predecessors of the Vich v Com- 
pany, which has since that time bottled and sold 
; the water under successive leases as its own, upon 
the payment of an annual rental of 100,000 francs 
to the government. Its present lease does not v- 
pire until 1934 It thus appears that the Frer, :h 
Republic has had no real interest in the prod.. <t 
of the springs for fifty y ears , and that it can have 
no such interest for thirty years to come. Its only 
t.tleto sue, then, is in a possible depreciation of 
; the rental value of this property after the lapse of 
the present lease, caused by the unlawful use of 
the name Vichy by the defendant. This is quite 
too inappreciable to answer the defense of laches, 
and, indeed, it is doubtful whether it justifies its 
joinder as co-plaintiff in the suit. To hold that the 
French Republic appears in this litigation to be 
suing for the use and benefit of the Vichy Com- 
pany would more accurately describe their rela- 
tions. 



In such cases, either where the Government is 
suing for the use anrl benefit of an individual, or 
for the prosecution of a private and proprietary 
instead of a public or governmental right, it is 
clear that it i.s not entitled to the exemption of 
milium* tempus, and thai the ordinary rule of 
laches applies in lull force. (United Siotux v. Beebe, 
137 U. S., 338; New Hampshire v. Louisiana, 1US 
U. S., 70; Maryland v. Baldwin, 112 U. S., 490; 
I 'nited States v. Des Moines &c. ( 'o., 143 U. S., 510, 
538; Curtnerv. United States, 149 U. S., 662; United 
States v. American Bell Telephone Co., 167 U. S., 
224, 261; Miller v. The State, 38 Ala., 600; Moody v. 
Fleming, 4 Geo., 115.) 

The plaintiffs, then, are put in this dilemma: If 
the Republic be a necessary party to the suit here, 
as it sues in its private and proprietary capacity, 
the defense of laches is available against it. Upon 
the other hand, if it be an unnecessary party, the 
defense of laches may certainly be set up against 
the Vichy Company, its co-plaintiff. / 

We do not think the position of thefplaintiffs in 

this connection is affected or strengthened by the 

eighth article of the treaty of June 11, 1887, with 

France and other nations, known as the Industrial 

Property Treaty, (Conip. of Treaties, 631.) which 

declares that — 

the commercial nam: shall be protected in all the countries ot 
tie Union without obligation of deposit, whether it forms' part 
or not, of a trade or commercial mark. 

That article was evidently designed merely to 
protect the citizens of other countries in their right- 
to a trade-mark or commercial naih . and then- 
right to sue inthe courts of this country, as if they 
were citizens of the United States. It could never 
have been intended to put them on a more favor- 
able footing than our own citizens, or to exempt 
them from the ordinary defenses that might be 
made by the party prosecuting. 

This is made th 3 more apparent from Artie! • 1 1 

of the treaty, which reads as follows: 

The subjects or citizens of each of th scontr; •, , ■- fetes shall 

enjoy, in aU the other State of the Union, Si 'ai asco i 

patents for inventions, U'A'J or commercial id 

mercial name, 'the advantages that 
at Present accord. 01 
jects. in consequence t! 
iatter.audi] 
[their right 
inalitiesand c mditi i npohsu . he 

domestic legislation ofea 

If there were any doubt, abo ;hts of the 

plaintiffs under the eighth a are com- 

pletely removed [by the n 

The rights of the French R . , tbli same, 

and no greater u 
United t, 



D. But ( ■ the def . .dies 

would not be avail asfi c 

or an atte 

of the - ■ iehy 

spring, (.> eln yr r. I Yyor, ITS rj. 8., . • axlelts 
her v. r &c. ' <., 179 U. S., 19; Prenost v. 

ffn , 6 Whea ina, 96 

. . " 138 U. '-.. 514,) we 
flndbu -■- suehpurp dsrec- 

ord. eir in- 

gredi;: 

and tr. the other 

Aineri - There 

isnoottem J. ant to 

sunulal - •' of the plaii n the body 

of "the ii word Vic] ised by 

thede .. Hon with 

Saratoga. The two labels n wholly 

in their design and contents, bi Q their lan- 

guage, that of the plaintiffs being wholly in 
French. Plaintiffs' label contains the word Vichy 
prominently displayed with a picture of the ther- 
mal establishment where it fes bottled, and the 
nameoi the particular spring. Defendant's label 
containsthe two words, " a Vichy," in type 

of the same size and displayed with equal promi- 
nence, and a statement t!:. . ratog ichyis 
far superior to the import It is true that 
in 1890 a small label was 'to the neck of 
the bottle upon whii -more 
prominent than that bt Saratoga. This label was 
printed upon a white' background, with the word 
Vichy iii prominent red letters, while the word 
Saratoga appeared in much smaller black letters 
included between the extended " V "' and " Y '' of 
the word Vichy. The circuit court considered this 
to be immaterial, and thought it inconceivable that 
any one of ordinary perception could be induced 
to buy this water as the imported viehy. A ma- 
jority of the court of appeals, however, while agree- 
ing with the circuit court as to the total dissimi- 
larity of the main labels, thought' a purchaser 
might bo deceived by the neck label into buying 
the Saratoga lor the imported article; and in that 
particular reversed the circuit court, and enjoined 
the use of the neck Ift I iel, or of any btjler label in 
which the place of the origin of the writer was not 
as plainly i . .itiy made known as the 
word Vichy. .Vsj liodofendantdidnotafpply for a 
certiorari, and 1 icsced m'.tli'e decree of the 
circuit court of appeals bychangicfe the offending 
label, we are not called upon to express an opinion 
as to the doo , bivc character of this label, i Hub- 
bard v. Tod, 175 IT. S., 474.) 

It was said by this Court in (anal v. < 'lark, (13 



Wall. 



!■■) 



Inallii loro rights to tit exclusive use pi a trade-mark 

are In ?ade I, it is Invariably hold that ilie essence ot the wrong 

in tl if i ne manufacturer or vender as 

tho lof ; and that it is only when this false l Bsenta- 

tion is directly or in lirestlj made that the party wlio appeals to 
a court of e juity can have reli C. 

Applying this doctrine to the case under con- 
sideration we are clearly of the opinion that there 
is no such similarity in the labels as at preseni 
a led :■■};'. ■ ,, uowninthe 

c induct of the tlcfen lent would authorize us to 
say that p] l to relief. 

The decree of the court of appeals is therefore 
affirmed. 



COMMISSIONER'S DECISIONS. 







'Of.a^T -£&*J, 



/ l 



Lea v. The Xew Home Sewing Machine- 
Company. 

Decided December J, 1901. 
Trade-Mark— Priority— Character of Proof Necessary. 
Where it is admitted that the senior party was a manufac- 
turer of sewing-machines bearing several trade-marks, one of 
which is the mark in issue, continuously since a certain date, 
proof to the effect that the junior party has some interest in 
the machines bearing the mark in issue is not sufficient to es- 
tablish the fact that the use of the mark resulted from the 
adoption of it by the junior party. 

Appeal from Examiner of Interferences. 

trade-mark for sewing-machines. 

Application of I. Cryder Lea filed November 5, 
1908, No. 66,943. Application of The New Home 
Sewing Machine Company filed February 9, 1892, 
No. 41,113. 

Mr. Clayton E. Emig for Lea. {Mr. James C. 
Busliby of counsel.) 

Mr. Charles F. Dane for The New Home Sewing 
Machine Company. 
Allen, Commissioner: 

This is an appeal by Lea from a decision of the 
Examiner of Interferences awarding to The New 
Home Sewing Machine Company priority of adop- 
tion and use of the trade-mark defined in the fol- 
lowing issue of this interference: 

The word " National '' as a trade-mark for dry-thread sewing- 
machines and accessories. 

The statements of facts made by the Examiner 
of Interferences with regard to the early business 
affairs of the two parties to this interference are 
here quoted as they have practically been adopted 
by the appellant in his brief, and they do not ap- 
pear to be disputed by the appellee. 

The statement relating to The New Home Sew- 
ing Machine Company is as follows: 

„ * * * In the early '?0's there was a commission firm in the 
city of New York doing business under the name of Carey & 
Wilcox^ In 1873 this firm sold out to Johnson, Clark & Company, 
a corporation which manufactured sewing-machines. Henry 
D. Carey, the senior member of the first firm, was employed in 
New York city by the second firm as manager of its export 
business. In 1SS2 this company in turn sold oat its business to 
The New Home Sewing Machine Company, the senior party to 
this interference. This company retained Carey in its employ 
until December 31, 1898, when he, following certain disagree- 
ments with his superior officers as to the personnel of the New 
York office, severed his relations with the company. 

The following statement of facts shows the be- 
ginning of Lea's connection with the sewing-ma- 
chine business:, 

* *^ * In the early '70's there was a commission merchant in. 
New York named M. H. Kinney, whose business was exporting 
sewing-machines and safes, i p. 7. ) In the latter part of 1875 
(p. 8> Lea was associated in business.with him as aai employee. 
On January 1, 1878, Lea formed apartaership withJQnney (Id.), 
trading Under the name of M. H. Kinney & Co. This partner- 
ship lasted until Mr. Kinney's death in April of the same year. 
TUa business was continued from this date by Kinney's widow 
and Lea,' under the, ham'e of Kinney & Lea. This partnership 
lasted until 1880, frhen Lea bought out Mrs. Kinney's interest 
and continued the business in his own name. This accounts for 
the numerous trade names— M. H. Kinney, Kinney & Co., Kin- 
ney & Lea, and I. Cryder Lea— which appear in the record of 
this case. 

It is admitted by Lea that he and his successors 
were not manufacturers of sewing-machines, but 
he contends that the trade-mark in question was 
his property and was used on sewing-machines 
manufactured for him by The New Home Sewing 
Machine Company and its predecessors. 

Lea testifies: 

29 Q. Did M. H. Kinney or Kinney & Co. or Kinney & Lea manu- 
facture sewing-machines? 

A. No. 

80 Q. From whom did M. H. Kinney and the other parties 
named in preceding question order hand sewing-machines? 

A. The machines were made "under contract for account of 
the several firms, by Johnson, Clark & Co., until 1882, and there- 
after by The New Home Sewing Machine Co., who succeeded to 
the business of Johnson, Clark & Co. 

The negotiations of Kinney and successors with 
Johnson, Clark & Company and their successor 
were made through a Mr. Schenck and Mr. H. D. 
Carey. Mr. Schenck died before the testimony 
Was taken, and Mr. Carey is now the financial 
backer of (Lea, X-Q. 68) and principal witness for 
_Lea. 



In view of this state of facts the testimony in be- 
half of Lea should be carefully scrutinized, and the 
burden of proof which is upon him as junior party 
is increased. 

There is no dispute as to the fact that Johnson, 
Clark <fc Company and their successor manufac- 
tured machines bearing the trade -mark "Na- 
tional." There is also no doubt, but that the Kin- 
ney firms had some interest in those machines 
which bore this trade-mark and that the Kinneys 
were not interested in the machines manufactured 
by the same companies which bore other^ trade- 
marks. These facts are showri by the testimony 
of the following witnesses: 

Bean, a witness for Lea, who was a salesman in 
foreign countries, testifies as follows with regard 
to his instructions: 

13 Q. State what, if anything, was said to you by either Mr. 
Schenck or Mr. Carey, at the time .said instructions were given 
to you, in reference to the sale of sewing-machines to foreign 
countries, bearing the trade-mark National or La Nacional. 

A. After giving the prices on T lie New Home sewing-machine, 
that is, the lowest price they could be sold at, the selling price 
of the National was given me. and both Mr. Schenck and Carey 
being present, particular instructions were given that the hand 
or National machine should not be sold in any case less than the 
price given, for the reason that The New Home Company were 
paying a royalty to some parties down town for the use of the 
name National. 

Leech, a journalist, testifies as follows relative to 
a conversation with Schenck pertaining to adver- 
tising: 

8 Q. Did you ever have any conversation with Mr. Allen 
Schenck as a representative of Johnson. Clark & Co.. in refer- 
ence to advertising the Jja. Nsvcional or National sewing-machine 
in your paper? 

A. laid. 



9Q can you 1^11^ and where such conversation took 

Pl i Ce There was more than one ; conversion in which reference 
was made to the machine caviled La Naciona, schenck re- 

but I can recall one sP^cmstenvyt Q a i S o to the firm whom 
f erred to the machme paiticulariy ana a^ the j ectors 

current report m the trade said at ue " u '° * * * i me n- 
of Yhfmachine^the firm c ?Lgin ne y & Lea ^ bead . 

tioned the machine La Nacional, ana. : sugg Sche nck gave 

vertised together with the other mactanes^ {or j 

SfrntSs%t\ S rw^rbe t inl P pro e p e riate P in the advertise- 
ment of Johnson,' Clark & Company. . 

McG-loin, an employee of H B. Carey & W«g> 
Johnson, Clark & Company, from 187 4 unt il.Sb . 
when the name was changed to The New Home 
Sewing Machine Company, testifies as foUows 

the La Nacional? 

H&^HrSSf«^SS3rffiSW the National 
machine, we were "^"'^"^^witn applications made to 
Jcfnnion^cSYco^ S?^^ »" °' ^ 
^TJpJothetimeof Mr Kinney^s death. j .could tell; notafter. 

22 Q You remember when Mr. Kmney aiea. 

k Q b Whal 8 was done with such applications up to the time of 
"ifaflSSctaBW about were transferred to Kinney & Co. 
up on Broadway. 

Thomas, a patent solicitor, who entered the em- 
ploy of Johnson, Clark & Company in 1873, testi- . 

fies as follows: . , _ La 

23 Q. When did you first know of the name JaUona^o ^ 
Nacional to be applied to sewing-machines, and unc n&me 

cumstances? My question refers to theapplicaoo 
to sewing-machines by Johnson, C lark A. ; oo. Thg ma _ 

a T_A„.,™.l„<™FlSra. The cu'CumstaniA "m j i in sou. 



W 



A intnespringof 1875. The ****»;»%£&» Johnson, 
chine was shipped from the Orange Ma^ ^ ya ' ma ,. ke d Na- 
Clark& Company, of Boston T"%macnin t h 

tional, and was sent to the Boston ^office ^ smpped t0 

spected by Mr. Schenck. It was tneu i'-f 
Kinney, in New York city. Tohnson, Clark & Co. did 

24 Q. During your connection ^/gXmlk or other officers 
you receive any instructions from Mr- « sewing-machines 
of that company with respect to the sat e ^ 

bearing the mark or name National oi u.» 
33 Q. State what instructions ;you ^eceived^ ^ of the 
A. The instructions I receded concern fe machin ,, s mark- 
chine, or the- National machine. »»""» acllin es of thai name 
National or La Naci one,as» 

were controlled by Kinney. 




m 



A 



A 



e.. Yes. _ «_ 

From whom and -when? 
Allen Schenck, along m 18S2. 
- ! ^;irS=fe aU machines hav- 

"ft^ ^^fr^ofKW'Mr. Schenck at the time 
those instructions were given 1 ; 

A. There was. 

8(3 Q. State what reason^. ,. nt , ,, a .rt on . 

A The reasons were that there was to be fiftj cents paid on . 
each machine sold under that name. 

While the above testimony tends to show that 
the ivjrfior party had an interest of some nature in 
the "National-' machines made by the senior 
party, it does not show how that interest arose or 
in what it consisted. 

Lea's interest may be as contended by him, or it 
may have been merely the interest of an exclusive 
agent. In support of his contention he testifies 
that the trade-mark " National " or " La Nacional 
was adopted by Kinney in 1873 (Qs. 11-13) upon his 
suggestion and used on the machines made by 
Johnson, Clark & Company and their successor, 
The New Home Sewing Machine Company, in ac- 
cordance with certain contracts made in 1873 and 
J.883, furnished them (Lea and his successors) for 

export. ait. 

The nature of the contract was testified to, by- 

Lea as follows: 

SO Q. Will you state what, if any, arrangement M. H. Kinoey, 
or Kinnev& Co., or Kinney & Lea had with Johnson. Clark & 
Co. for the manufacture of hand sewing-machines with the 
trade-mark La In acional applied thereon? . .. 

A. The hand sewing-machine manufactured under the name 
La Nneionnl, was exclusively made for the several firms, and 
Husy were distinctly prohibited from selling any of those ma- 
chines, except through those several firms. 

40 Q. Who was prohibited? 

A. Johnson, Clark & Co. - , . ., Mltl 

41 Q. What firms do you mean by the expression "several 

A. M. H. Kinney, Kinney i 




I Co., and Kinney & Lea. 



How long did the arrangement with Johnson, Clark & 
Co. for the manufacture of hand sewing-machines stamped with 
the trade-mark La Nacional continue? 

A. Until The New Home Sewing Machine Company succeeded 
o the business nf Johnson, Clark & Co. , 

18 ' i. What was the fiscal uud< rstanding in that arrangement. 

Y. rrom the beginning of the manufacture of La Isaciorai 
machines until install inquiries for prices or orders tor se*M3g- 
machines of that brand were referred to M H. Kinney, M. a. 
Kinney & Co., Kinney & Lea, and I. Cryder Lea, who had the- 
sole right to make prices and sell the goods. After that time 1 
made an arrangenieot with The New Home Sewing Machine 



under that trade-i 

marks that were then in use in our trade. 



D V-n rarev who formerly was manager 
(Q H lT^hetm y ;f Johnson, Clark * Company 

relating to ^^^ Q «^ t ^Z Lea: 
timony in corroboration ol^pvm y^ 

£&«Efl««^ ««■- to sewlDg ' mi " 

chines in IK. 5? 
« Q.'sSt" what the circumstances > w«§^ ndeP nam f I 
A A firm on Broadway doing ^° T f'l machine built fov , 

M. H. Kmney, conceived the idea of hxv.ng bie tiation wlt h 

SS&SSS ISS&OTE Nacional was the result. 

» B «nTo C « S W^^adoptio n by M. H. Km- 
uey, of said name? 

A NelTher the testimony of Lea ™**£^ 
above quoted tends to support the contention 
made by Lea that the trade-mark was adopted 
Td used by him. All that this testimony shows 
Tthat Machines bearing the trade-mark << N* & 
tipnal" were manufactured I by Johnson Clark * 
Company and successors and that the Kinney nrni 
were interested in these machines. „ 00 

Leatestiflestothereceiptbyhimof about $1V00 

from Mr. Schenck during the period from 1884 to 
189? but it is not established that this money was 
£ royalties due him for the use of the t^e-mark 
..National." It to, in fact, more reasonable to pre 
sume that this money was received m P»^* f £ 
commissions as agent. The contracts aUeged to, 
Lve been madewereoralones. No documentary 

evidence is submitted which tends to establish the- 

nature of the contracts. ■ ■ . 

TheExaminerpflnterferenceshasgoneveryfully 

into the evidence, and as .his statements of facts 
and conclusions are approved it is not necessary 
to further analyze the testimony, as to do so would 
merely result in a repetition of what has already 
been said by him. 

It is held that Lea has failed to establish the 
fact that the use of the trade-mark "National 
resulted from his adoption of it, and the decision 
of the Examiner of Interferences awarding priority 
of adoption and use to The New Home Sewing 
Machine Company, the senior party to this inter- 
ference, is affirmed. 



v^ 



At£*f. 



OOMMISSIOHEE'S DECISIONS, 




Ex parte Marsh Brothers Company. 

Decided December 7. 1903. 

Tbadb-HUbks-Edgb-Tools-Goods of Same Descriptive Prop 
ebties— Division of Application. 
Where a trade-mark application tor cutlery and edge-tools 
d^mbes many different kinds of edged tools which have no 
real resemblance to each other, Held that the application is 
not limited to goods of substantially the same descriotiv e 
properties, and division of the application is necessary. ' 

On appeal. 

trade-mark for cutlery and edge-tools. 

Application for registration filed September 5, 
1003, No. 66,533. 

Mr. George P. Whittlesey for .the applicant. 
Allen, Commissioner: 

This is an appeal from an action of the Examiner 
01 Irade-Marks requiring that the application be 
so limited as to include only goods of substantially 
the same descriptive properties. 

The application now describes the goods to which 
tne mark has been applied, as follows- :. 

The Examiner says : 

to each othtr n ?hat e the S M 6 , *** t° be so intimately related 
be an infringement o?t '» „°£ a * ??' tlcular >"ark upon one will 
The same mly be sa u to he < ™ ^ ? ame mar J? u P oa the otller - 
adzes; of scythe! and skd-le fl „S V/Sf and d , les; of axes and 
maining goods K S ,- o£ , n i es , and ras P s ' The ™- 
any of the other £nn f 7=oi ot so related to each other, or to 

it is clear that the Examiner's action is in cdri- 

o T L7! th the ruIiD ^ in ex P arte Faxon, (103 
u. u., 891,) ex parte Tallmadge, (104 O G 2443) 
and ex parte Peck Brothers Co., (106 O. &' 704) 
and the argument presented by the appellant is 
an attempt to show that the decisions are wrong 
It is argued that section 7 of the Trade-Mark act 
does not limit a single registration to "merchan- 
dise^ substantially the same descriptive proper- 
ties but merely provides that to infringe the 
mark must be applied to 3 oods substantially like 
some of the goods mentioned in the registration 
It is contended that they need not be like all of 
tne goods mentioned in the registration 

It is very true that section 7 does not deal di- 
rectly with the question what goods may be cov- 
ered by a single registration; but it does define 
clearly the extent of a single trade -mark right 
ine right to pursue an infringer extends no farther 
than to 'merchandise of substantially thetanie 
descriptive properties," and if the use of the mark 
upon other merchandise is to be protected at all 
it is as an independent trade-mark right. Section 
1 ,is therefore authority tor the ruling in the above- 
cited cases when taken in connection with the -en 
eral principle that only one trade -mark right 
should be protected by a single registration ° 

The decision of the Examiner of Trade-Marks fe 
affirmed. 



/c? %: ^Zf, -2J=zP" 



COMMISSIONERS DECISIONS, 




Ex parte Camel Compaq 

Decided December r, 190S. 

■ TRADB- MiKK _ Dmsi0N of Application-Goods of the Same 

Descriptive Properties. 

Where a trade-mark application covers " railway supplies » 

—"b emS deSCribed aS " cai '- a °ors, their trimmings and 

eoods n Tf ' l HeU that Hle a PP"<= a tion is not limited to 

fhat the E " U ^ the Same desc "P«™ Pities and 
that the Examiner properly required amendment. 

3. Same-Particular Description of Goods 

Where the particular goods of a trade-mark application are 

Held too ndeHmte and not a compliance with the law reouir 
ing a particular description of the goods. 

On appeal. 

TRADE-MARK FOR RAILWAY SUPPLIES. 

Application filed July 3, 1903, No. 08,041. 
Mr. Louis K. GHllson for the applicant. 
Alien, Commissioner: 

ine^f VrTi a ?t P 1 Ifr ° m the decisIon of the B»m- 
be limiS Ti " ^ reqU ^Pa that s the application 

dMoriptave properties and requiring a more defl- 

the e m e ar C k T h0 " ° f the P«*«*» aood. to which 
tne mark has been applied 

The class Of goods is said in the application to be 
railway supplies," the description of them bei ,g 

ings" T; r " ^T^ 8 and Jonnud-bS 
"igs The terms "trimmings" and "iournal- 
bearin gs , indefinite! &g ^ J™ nal 

JS h ^'v [ Mthermore . efficiently broad to 
nclude goods which are not of substantially the 
same descriptive properties 

ta^%t^: n ?Sfy[n h gl the ^^ C - 
^a^ffia-j aK H^ (giS ^ to 

SeT wi thlS requirement the description con- 
SeSc Pr6Sent CaSe Sh0UId be made ™™ 

in tioW r^* admitS * hat the goods mentioned 
™ PP ! atl0n are not a11 of substantially the 
ment fo^T ? ***««« and that the require- 
ment for a limitation of the application is in ac- 
cordance with the rulings in the following cases- 

S fioe a S^T and e " *"* Pee * *** * 

It is contended, however that «,„ 1 

apply too strict a rulJand that £ S mT CaSS3 
fieil Tf ;»„>.. It, namat,fc should be modi- 

sold Se^i COV61 ' a g ° 0dS Which Up ° n brfn ^ ' 
wo«M . th \ same m ^rk the purchasing public 
would assume had the same origin. This sugges- 

2! T e T' W ° Uld make trade-marks the same 
dP^l trad6 ; llames - As pointed out in the above 
decisions the trade-mark right extends no farther 
th^ntotheuse of the mark upon "merchandise 
ot substantially the same descriptive properties." 
(Sec: 7 act of March 3, 1831.) Ko reason is seen 
lor modifying the rulings made in the above-noted 
cases. 

The decision of the Examiner of Trade Marks is 
alarmed. 



ia* 



— 



~^/J- 






tif.*f. zffl 



COMMISSIONERS DECISIONS, 




EX PARTE GEKBH. 
Decided December 7. 19C3. 

TRADE-MARKS-" HEALTH " FOR CANDY-DESCRIPTIVE 

Th "t " d '• Health " as a trade-mark for chocolate cand* re- 
f used registration on the ground that it is descriptive. 

ON appeal. 

TRADE-MARK TOR CONFECTIONERY, ETC. 

Application filed August 6, 1903, No. 68,853. 
Mr. S. C. Sweet for the applicant. 

Allen, Commissioner: ™„ OT „ 

This is an appeal from the decision ol the Exam- 
iner of Trade-MaBks refusing to register the word 
» Health " as a trade-mark for chocolate candy on 
the ground that it is descriptive. _ 

The word undoubtedly means that the candy is 
wholesome and is not injurious to health. It is di- 
rectly descriptive and cannot he exclusively appro- 
priated by one person, r. 

The reasoning of the court in S idler v. Huff, (93. 
O G 1020,) referring to "Health Food," is appli- , 
cable to the present case, although the final deci- . 
sion in thai uim turned upon the question of un- 
fair competition and not the question of trade- 
marks The present case is not to be distinguished 
from that by the failure to include the word candy 
after the word " Health." It is used upon candy 
and would be referred to and understood as Health 

Cindy n 
The decision of the Examiner of Trade-Marks is 

affirmed. 



/otfr?-?-'?' 



COMMISSIONERS DECISIONS, 




Ex parte Sutton. 

Decided December 10, 190S. 

1. Trade-Mark— The Word " Pepko " Anticipated by the Word 

"Pep-Kola." 
A trade-mark consisting of the word "Pepko " refused reg- 
istration upon the registered word "Pep-Kola." 

2. Same— Identity of Marks— Appearance as Well as Sound 

Shall be Considered. 
" In considering the identity of two trade-marks" the appear- 
ance of the marks is as important as the sound of the words 
used therein when these words are spoken. Both senses arc 
to be used in determining the question whether or not one 
mark so nearly resembles the other as to have the tendency to 
mislead and to cause confusion in the minds of the purchasing 
public." {Expurle Vogel <fcSon,99 0. G.,2321; C. D., 1902, 1"'. . 

On appeal. 

TRADE-MARK FOR BEVERAGES. 

Application filed July 14, 1903, No. 68,717. 

Mr. liexford M. Smith for the applicant. 
Allen, Commissioner: 

This is an appeal from the refusal of the Exam- 
iner of Trade-Marks to register the' word ' ' Pepko " 
as a trade-mark to be applied to tonics or bever- 
ages to be used as stimulahts. 

The refusal is based upon the registered trade- 
mark to A. W. Stewart and Company, No. 28,444, 
June 23, 1896, which Consists ctf the compound word 
' ' Pep-Kola " as applied to the same class of goods, 
The words "Pepko" and "Pep-Kola" have the 
same appearance, and the sound of the words is 
substantially the same when spoken. As stated in 
ex parte Vogel and Son, (99 O. G., 2331:) 

In considering the^rentity of two trade-inarms the appear- 
ance of the marks is as important as the sound of the words used 
therein when these words are spoken. Both senses are to be 
used in determining the question whether or not one mark so 
nearly resembles the other as to have the tendency to mislead 
and to cause confusion in the minds of the purchasing public. 

It is held that the words so closely resemble each 
other as — 

to be likely to cause confusion or mistake in the mind of the 
public or to deceive purchasers, (aec. 3 of the Trade-Mar* act. i 

The decision of the Examiner of Trade-Marks is 
affirmed. 




6£*rl ??7 



COMHISSIONEE'B DECISIONS, 




67,540: 

Be id for 



Ex tarte The Hooker, Corser as. 
ell Company. 

Decided December ;, 100S. 

TRADE-MARKS — "C'AXTRIPCM" FOR C'LOTniSQ — JIlSSPELLED De- 

scriptive Phrase. 
•' Cantripum" refused registration as a trade-mark for cloth- 
ing upon the ground that it is a mere misspelling of the de- 
scriptive phrase "can't rip them." 

On appeal. 

TRADE-MARK FOR CLOTHING. 

Application filed February 2, 1903, No 

Mr. Wm. S. Bellows and Mr. Wm. If. 
the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade- Marks refusing to register the word 
" Cantripum" as a trade-mark for clothing on the 
ground that it is descriptive. 

The ward is clearly a mere misspelling of the de- 
scriptive phrase "can't rip them," and would be so 
understood by the ordinary jmrchaser. It is not a 
coined word, but it is merely a misspelled phrase. 
Any clothing dealer has the right to say in regard 
to his clothing that you "can't rip them," and a 
mere misspelling of the words does not make them 
capable of exclusive appropriation as an indication 
of origin or ownership. They state quality, not 
origin. 

The refusal of registration in this case follows 
the practice announced in the following cases: ex 
parte Henderson, (85 O. G., 453;) ex parte Miller, 
(95 O. G., 1452;) ex parte Woolworth, (100 O. G., 
1976;) ex parte West, (100 O. G., 682.) 

In ex parte Miller it was said: 

I am clearly of the opinion that the word is descriptive and 
thai; it i» nut rendered the less so by the fact that it is made up 
c<£ three words. It cannot in any true sense be said to constitute 
a coined or arbitrary word ^hen it conveys, the same idea wlu-n 
read or pronounced as would the three words written sepa- 
rately. A mere change in the manner cf writing the mai'lt can- 
not be held to change its character so long as the im. ression 
made by it is the same. 

The decision of the Examiner of Trade-Marks is 
aflimied. 



/O fj- ^J-^f 



COMMISSTOtfEE'S DECISIONS. 



vj 



\W- 



Prank Ax\d Gutmann v. Macwilliait. 

Decided December in, igoj 
Trade MA R^L NTERFERr: -, E _ Es pAliT:; A „^ 1 

On appeal. 

TRADE-MARK FOR SUSPENDERS 

bet P M H S°?r 0f - ank aDd Gutmann filed Deeem " 
ber 20 1903, No. 67,259. Trade-mark of Hugh G 

Macwilharn registered May 10, 1899, No. 32 865 
JJtom. Brown & Seward for Frank and Gut- 

Mam. Lothrop d- Johnson for Macwilliam. 
Allen, Commissioner: 

H,p!S? - S aQ a ? Peal by Frank and Gutmann from 
olvfnl h^ ^ EXamIne1 ' ° f T -de-Marks Z 
rrounI t ;l^ OVe " entitIed faterfer ence on the 
ground that there ia no interference in fact and 
on the groundthat Frank and Gutmann have no 
right to claim the trade-mark in controversy 

-The ^e consists of the word " President "used 
as a trade-mark for suspenders 

stoSI^T* haS been re ^ered for use on 
is whert T ! th6 OD }F^^on in controversy 
is whe her Frank and tfutmafln have the right to 

claxmxtsuseuponmerchandiseofsubstantianytlS 
Ct M l 1PhVe pr °P erties - The Examine/says 
DorteS 67 ^ T d the mark ^"Pon hose-sup- 
tZwT that SUCh artIcleS are not ° f ^bstan- 
F^^ eSa ?r d ! SCriptiVepr0pertiesassus P e °ders. 
tw^ and &utm ann's original application said 
that the mark had been used upon "garment-sup- 
porters. By amendment this was changed to 
hose -supporters," and later to "suspenders." 
Iheir present application, therefore, alleges a use 
ol the mark upon suspenders, just as does Macwil- 
harn s regtstration. Certain affidavits on file and 
the arguments which have been presented indicate 
mat the particular form of garment -supporters, 
upon which Frank and Gutmann have used the 
mark is not the same as that upon which Macwil- 
harn has used it. These affidavits and arguments 
however, being ex parte, do not constitute proper 
evidence upon which to found a judgment con- 
trary to the allegation of the application. The 
allegation in Frank and Gutmann's application 
that the mark has been used upon suspenders 
evidence* ^ dlSprOVed ^ e °uipetent 

It has been pointed out by Frank and Gutmann 
mat there is no clear line of demarcation between 
what are called "hose-supporters" and what are 
called suspenders. » The question whether there 
is a real conflict of rights may depend upon the 
particular character of the articles upon which the 
mark has been used, and this will appear from the 
testimony. 

Upon the present record it cannot be held that 
-brank and Gutmann have no right to claim the 
use of the mark upon suspenders, nor can it be 
held that the parties have not used the mark upon 
merchandise of substantially the same descriptive 
properties. 

The decision of the Examiner of Trade-Marks 
dissoH-ing the interference is reversed. 






' 




t 

/Of, 



COMMISSIONERS DECISIONS. 




w\ 



COMMISSIONERS DECISIONS. 



Ex parte War. T. Reynolds & Co. 

Decided December 16, 1903. 
\. Label— Lack of Autistic Merit— Trade-Mark. 

A label which in itself possesses no artistic merit is not rei- 
dered registrable by including as one feature a registered 
trade-mark which does possess artistic merit. 

2. Same— Same— Same. 

Where the only thing in a label founded in the creative : 
powers of the mind is a registered trade-mark placed on it, 
Held that the label is not registrable. 

On appeal. 

H.ARF.T. FOR COFFEE. 

Application filed October 15, 1903, No. 5,078. 
Mr. Joseph L. Atkins for the applicants. 

Allen, ' Commissioner: 

This Is an appeal from the action of the Primary 
Examiner refusing to register a label for coffee on 
the ground that it is not an artistic production 
"founded in the creative powers of the mind." 
{"Biggins v. Eeuffel, 55 O. G, 1139.) 

The label consists of ordinary printed matter a,r- 
tranged in the ordinary way, describing the article 
to which it is applied, and containing the name 
and address of the applicants. The label also in- 
cludes in its upper portion an arbitrary figure 
which has been adopted by the applicants as their 
trade-mark and which has been registered in ihis 
Office, No. 40,500, June 2, 1903. This arbitrary fig- 
ure is artistic and is the result of intellectual labor, 
and the sole question presented for determination 
lis whether its addition to ordinary descriptive 
printing makes a registrable label. 

The design constituting the registered trade- 
mark has been published and is therefore not now 
entitled to protection under the copyright law, of 
which the label law is a branch, even if it was en- 
titled to protection when first made. It is pablis 
property in so far as the label law is concerned, 
and therefore any artistic merit in it alone cannot 
make the label upon which it appears registrable. 
The law expressly says that a trade-mark may not 
ibe .registered as a label. The artistic merit in the 
Ua'bel must therefore not reside in the trade-mark 
alone. The label in its entirety must be artistic. 
No intellectual labor was involved in the arrangg- 
ment of the parts of the present label, since the 
arrangement is that which would naturally be 
adopted by the ordinary type-setter. 

The decision of the Examiner refusing registra- 
tion is affirmed. 







Vanden Bergh & Company v. Blankenheym & 

NOLET. 
Decided December ?..', 1003. 

1. Trade Marks— Interference— Priority. 
Held that V. B. & Co. adopted the mark for gin before B. & N. 

adopted it for geneva, and therefore priority awarded to V. 
B. & Co. 

2. Same— Same— Goods of the Same Class— Gin and Geneva. 
"Where one party used the trade-mark upon gin and the other 

upon " Holland Schiedam Geneva," Held that the goods are 
substantially the same and that the first to adopt the mark is 
entitled to registration. 

On appeal. 

trade-mark for cordials and spirits. 
Application of Vanden Bergh & Company filed 
February 20, 1901, No. G2,735. Application of 
Blankenheym & Nolet filed September 3*^1896$ 
registration Nov 30, 126. 

Messrs. Br'iesen & Knauth for Vanden Bergh. &. 
Company. 

Mr. Frederick Q. Dieterich and Mr. Vernon M'.. 
Dorsey for Blankenheym & Nolet. 
Allen, Commissioner: 

This is an appeal by Blankenheym k Nolet 
from the decision of the Examiner of Interferences 
awarding priority of adoption and use to Vanden 
Bergh & Company of the trade-mark Consisting 
of— 

the representation of a bell for geneva, (gin.) 

The junior party, Vanden Bergh & Company, 
registered its trade-mark for gin in 1876, the certi- 
ficate of which registration is in evidence. (Van- 
'den BergKs record, p. 10.) The law under which 
such registration was made (the act of 1870) having 
been declared invalid by the Supreme Court, Van- 
den Bergh & Company filed its present application 
February 20, 1901. 

Blankenheym & Nolet have taken no testimony 
on the question of priority, and accordingly they 
are restricted to their date of application, June 1, 
1897. j 

It appears clearly from the testimony submitted 
in behalf of Vanden Bergh & Company that gin 
made by this company and bearing the trade-mark 
in issue has been sold in this country for over a 
quarter of a century, and this is not questioned 
Seriously by Blankenheym & Nolet. 

Blankenheym & Nolet contend, however, that 
the particular goods on which they use the trade- 
mark is "Holland Schiedam Geneva," and as it 
has not been shown that Vanden Bergh & Com- 
pany has used the mark on this particular variety 
of goods they, Blankenheym & Nolet, are entitled 
to priority. They contend, in other words, that 
"gin" is a generic term, while "geneva" is a par- 
ticular variety of gin, recognized by the trade as 
such, and that therefore proof of priority of adop- 
tion and use of the mark on gin is not proof of 
adoption and use of the mark as applied to ge- 
neva. 

This contention is not well founded. These two 
terms are defined in the Century Dictionary as 
follows: 

nerer' i (A »J' e ™'? o£ ? e peva, or rather of the older form ge- 1 
^Uor^hlu^eXe.^r' 6 ^ " 1 rye ° r ° ther *& 

&$S3£&^££3£ a h tae add " ion o£ i™*k&8S! 

Substantially the same definitions are given by 
other standard authorities. 

It thus appearing that the terms "gin "and "ge- 
neva " are deduced from the same origin and mean 
the same thing and that the mark adopted in this 
case is thus used upon goods of the same descrip- 
tive properties, the judgment of the Examiner of 
Interferences awarding priority to A'anden Bergh 
is affirmed, 




Department of the Interior, 

United States Patent Office, 
..,,-'.. Washington, D. C, January 9, WO!t. 

The following part of an inclosure in a i&ttejMO*thesSeereJ»r-j> 
of State transmitted to this Office by the Secretary of the Inte- 
rior is published for the information of those concerned. 

F. I. ALLEN, 
Commissioner. 

REPUBLIC OF CUBA. 

f Department of Agriculture, Industry, and Commerce. 

Instructions relative to the Procedure to be followed for the 
Registry in this Republic of Foreign Patents and Trade- 
Marks. 

For the registry and consequent protection in this Republic 
of any foreign patent, the interested party must solicit same 
from the Department of Agriculture, Industry and Commerce, 
either in person or by power of attorney, remitting a certified 
copy of its registration in the country of origii,. with the corre^ . 
sponding explanatory memorial. 

The signature of the Commissioner of Patents or of the Chief 
of the Department of the country of origin, authorizing the said 
copy, in order to have due legal effect, must be legalized in the 
manner prescribed in Presidential Decree No. 48 of April 11, 
1903. 

All documents should be accompanied by a Spanish transla- 
tion, made or attested by any of the notaries public of the Re- 
public authorized to that end, or by her diplomatic or consular 
agents residing in the country of origin of the said documents. 
These, as well as the plans of the patent, must be presented in 
duplicate; the second copy of the translation may be signed by 
the interested party. . 

If a patent owner desires to register same in this R^publie 
threugb a third person, he must forward at the same time e> 
lirdrierly drawn up power of attorney in favor of the person 
who is to represent him. To have due legal effect this power 
must also be legalized in the manner above mentioned. 

After acceptance of the registry in this Republic, if proper, 
said acceptance will be communicated to the petitioner (owner 
or representative) in order that he may pay into the office of 
the Administrator of Rents and Taxes of the Fiscal Zone of Ha- 
bana the fees amounting to $35.00 United States currency; and 
on presentation in the Department of Agriculture, Industry and 
Commerce of the receipt for said amount from the Treasury 
Department, the deposit certificate of the patent will be at once 
issued, in favor of the owner of the same. 
• For the registry of marks of all kinds, industrial drawings, 
etc., the procedure will be the same as for registry of"patent8. 
The only difference being in the amount of fees, in this case, 
being reduced to $12.50 United States currency, and that after 
acceptance of the registry and before issuing the deposit certifi- 
cate of the same, the petitioner must present five more copies 
of the corresponding industrial drawing or sketch of the mark. 

To facilitate despatch of these matters in the Republic of 
Cuba, it is suggested that some person in this city be appointed 
and given the full and necessary powers. 

Habana, May 5, 1903. 

Tlie Sub-Secretary. 

B. PICHARDO. 

Approved: 

MANUEL L. DIAZ. 

Acting Secretary. 



Official Gazette, Monday. April SO, 1003. 
(Decree No. 48.) 
Department of State ufd Justice. 

1 hereby decree the following, by Vii'tue of the 1 authority given 
me by the Constitution: 

Article I. The legalization, required by law, for public or of" 
ficial documents of all kinds issued in foreign countries by for- 
eign functionaries, to become effective in Cuba, must be made 
by a diplomatic or consular agent of the Republic or such per- 
sons as act in their places. When a document has been issued 
in a country where there is no accredited diplomatic or consu- 
lar agent of Cuba, it may be legalized by the diplomatic agent or 
any of the consular agents of the stfme country, accredited in 
the Repub'ib. 

Art. II. For legalizations made in accord with the provisions 
of the foregoing article to be held as good in Cuba, it shall also 
be an indispensable requisite that the signature of the function- 
ary who appears as authorizing them be legalized by the Depart- 
ment of State or Director of the Department. Notarial docu- 
ments issued by diplomatic or consular agents of the Republic, 
and those they may issue referring to the Civil Registry must 
contain the same requisite to be considered in Cuba as authentic. 

Art. III. The provisions of the two foregoing articles will be 
applicable to documents presented in courts or offices of the 
Government, from the date the oresent decree takes effect. 

Done at Habana, President's Paiace, on April 14, 1903. 

T. ESTRADA PALMA. 

President, 

f'AKLOS DE ZALDO. 

Secretary of State and Justice. 




/o fey. 7 7 & 



EX PARTE RlPPEN. 
Decided December s. lf-03. 

1. Labels— Coat of Arms of Foreign Nation— Registration 

Refused. 

A label will not be registered where it includes as a feature 
thereof the coat of arms of a foreign nation. 

2. Same — Same — Public Policy. 

The grounds of public policy which prevent the registration 
of the coat of arms of a nation as a trade-mark have equal 
force in the matter of the registration of labels. 




On appeal. 



label for tobacco. 



Application for registration filed July 25, 1903, 
No. 4,754. 

Mr. Stephen J. Cox for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Primary 
Examiner refusing to register a label which in- 
cludes, among other things, the coat of arms of 

Hungary- 

The label in question consists of this coat of arms, 
above and below which is some printed matter, 
surrounded by an ornamental border. The bor- 
der and the printed matter of themselves would 
never confer registrability upon this label. They 
are simply such grouping of materials as is expect- 
ed of any type-setter. The only feature of this 
label which maybe said to include anything artis- 
tic is the coat of arms of Hungary. Therefore the 
argument of the appellant that "in the label in 
question the coat of arms is a minor feature " is not 
convincing, and it is thought that since the objec- 
tionable element is the only element containing 
anything artistic it is relatively important and 
I that the action of the Examiner in refusing it reg- 
' istration was right. The grounds of public policy 
| which would be applicable in cases of trade-mark 
are of equal force in the matter of the registration 

of labels. 

I therefore agree with the conclusion of the Ex- 
aminer that " applicant is not entitled to protec- 
tion under section 3 of the Copyright Act for a label 
which involves as a feature thereof the pictorial 
representation of the coat of arms of a foreign na- 
tion," and his decision is accordingly affirmed. 



" 



mm 



H*l 



REGISTRATION OF FOREIGN PATENTS, TRADE-MARKS, ETC., IN CUBA. 







Department of the Interior, 

United States Patent Office, 

Washington, D. C, Januarys 

The following part of an inclosure in a Letter of theSecretary 

f S a e Lsmit.ed to this Office by .he Secretary of he Inte- 

Spublishea^theinfo^aHonof^ose^nc^ed^ 

Commiw"'" 1 '''- 
REPUBLIC OF CUBA. 

DEPARTMENT OF AOUICIU.TFRE. INDUSTRY. » C 

y" the registry and consequent ^o^A^s^^ 
ot ; , liy foreign patent the ^restea ^^ and Cora n,erce 
from the Department ot Ag urn ^ remitting a certified 

spending explanatory memorial. Qr rf th cllipf 

'The signature of t In U mum ssi .« i - autnoriz i n g the s-id 

of thepepartment^the country or «m^ bg t fl . t 

nSe? S£S&d2M£*a Decree No. IS ot Apr,. 11, 
"& documents should be accom^^by a Spanish transla- 
tion, made or atta*dte any of ^^[plomatic or consular 

fefe« 3 ecrddoi £?SS&52 may be signed by 

the interested party, register same in this Republic 

If a patent owner deares to regi^ci a 

through a third person 1 e must fo ™ a ™ favor of the person 

properly drawn up power of ^torney in fa ._ 

; ;,:; £££&£& -^certificate , of the patentwiU be at once 
4^»ff,£&£5gffS?B5£. mdustrial a^w^ 

^Wa^^^^SS 

,,. , orim-ed to S13.50 United States currency, and that after 

acceotVmU of the registi v and before issuing the deposit cert fl- 

SSKfSK same, the petitioner must present five more .copies 

of the corresponding industrial drawing or sketch ot the maik. 

To facilitate despatch of these matters in the Republic of 

Cuba ft £ suggest that some person in this city be appointed 

iven (he full and necessary powers. 

Havana, May 5, 1908. Sub-Secretary, 

B. PICHARDO. 

Approved: 

MANUEL L. DIAZ. 

Acting Secretary. 



Official Gazette. Monday, April SO, 100S. 
(Decree No. 48.) 
Department of State and Justice. 
I hereby decree the following, hyvirtueof the authority given 
institution : 
e . The legalization, required by law, for public or of- 
Bcial documents of all kinds issued in foreign countries by for- 
ionaries, to become effective in Cuba, must bo made 
i ic or consular agent of the Republic or sin h per- 
act in their places. When a document has been issued 
where . bere is no accredited diplomatic or consu- 
oi Uuba.l. a alized by the diplomatic agent or 
alar agents of the same country, accredited in 
public. . . 
1 1 For legalizations made in accord with the provisions 
log article to be held as good in Cuba, it shall also 
beanindispen il ite that the signature of the function- 
ary who appears as authorizing them be legalized by the Depart- 
ment of Stateor Director of the Department. Notarial docu- 
ments iss by diplomatic or consular agents of the Republic, 

and those theymaj Issue referring to the Civil Registry must 

the same requisite to be considered in Cuba as authentic. 

\ut ill The provisions of thetv, • foregoing articles will be 

applicable to documents presented in courts or offices of the 

(Government, from the date the present decree takes effect. 

Doneal Habana, President's !»••■.« I.^'V i : 

/■',, adent. 

CARLOS HE ZALDO, , , ,. 

Secretary of State and '" 




COMMISSIONERS DECISIONS.' 




3 




Ex parte Van Horn & Sawtell, 



Decided February 19, 190h. 
Trade-Marks— Applicant's Surname— Salient Feature. 

The word "Van Horn" associated with a ram's forehead 
with horns Held not registrable as a trade-mark, since the 
salient feature of the mark is the surname of one of the 
applicants. 
Same— Same— Relative Obscurity of Name. 

An applicant's name cannot be included as feature of a| 
registered trade-mark unless it is reduced to a position of rel" I 
ative obscurity. 

On appeal. 

trade-mark for surgical supplies. 

Application filed May 9, 1903, No. 68,265. 

Messrs. Schreiter & Mathews for the applicants. 
-Allen, Commissioner: 

This is an appeal from an action of the Examiner 

of Trade-Marks refusing to register a trade-mark 

for surgical dressings and suture materials which — 

consistsof the conventional representation of a ram's forehead 
with horns associated with the word " Van Horn." 

The name Van Horn is a common surname and j 
one of the salient features of the corporate name. 
There is no contention on behalf of the appellant 
that this surname as such is registrable as a trade- 
mark, but it is contended that by being associated 
with the ram's horns this common surname is re- 
ducedto a position of relative obscurity, and there- 
fore that the entire mark is a proper subject for 
registration. 

The Examiner states that the ram's horns alone 
■are believed to be registrable. The case is there- 
fore one where the trade-mark is made up of two 
features — first the name ' ' Van Horn, " which is ac- 
knowledged not to be alone a proper subject for 
registration, and, second, the ram's horns, which are 
a proper sub j ect for registration. S ueh a question 
arose in ex parte Tabor, (9G O. G., 1036,) in which it 
was sought to register the surname "Tabor" with 
a Latin cross. In this case I held: 

The mark disclosed consistsof two independent essential fea- 
tures— the cross, which is probably registrable, and the appli- 
cant's name, which is not registrable. The name cannot prop- 
erly be included as an essential feature of a registered mark. 

It also arose in ex parte Cobb, (103 O. G., 1913,) 
where itwassoughtto register the word "Cobb's" 
extending across a pair of crossed corncobs. The 
circumstances of this last case are very similar to 
the appellant's, where it is sought to use the 
word " Horn " upon a ram's horn. It was held in 
this case, however, that the word "Cobb's" was' 
not reduced to a position of relative obscurity by 
having it extend across a pair of crossed corncobs, \ 
so in this case it is held that the name Van Horn I 
is not reduced to a position of relative obscurity 
by being placed on a ram's horn, and therefore the 
decision of the Examiner of Trade-Marks refusing 
to register such mark is affirmed. 




OOMMISSIOHEB'S DECISIONS. I 



Ex parte Chari.es A. Masters & Company. 



Bedded February SO, 100!,. 
^^e-SLlr&-<<Yaij! "-Geographical Word— Proper Name. 
Held that the word ■• Yale " has a geographical significance, 
—id being a common surname is not such an arbitrary word 
as would make it the sole property of any one individual, and 
Hs registration as a trade-mark should be refused. {Ex parte 
Peats, 96 O. G., 1649.) 

On appeal. 

TRADE-MARK FOR HOSIERY AND UNDERWEAR. 

Application for registration filed November 16, 
1903, No. 09,506. 

Mr. F. B. Brock for the applicants. 
Alien, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the word 
"Yale " as applied to hosiery. 

The question whether this word is a proper sub- 
ject for a trade-mark was passed upon in ex parte 
Peats, (90 O. G, 1049,) in which it was held: 

The word " Yale " is not an arbitrary word. It is true that to 
many people it would signify the great university at New 
Haven, Conn., named in honor of the historic personage Elihu 
lale. The word "Yale" has, however, a geographical signifi- 
cance and is also a more or less common surname. Each of ' 
these facts has been shown to be true by the Examiner. It is 
clear, then, that the word " Yale " is not such an arbitrary word 
as would make it the sole property of any one individual. 

The word "Yale" corresponds in all respects to the word 
" Bowdoin," which was refused registration as a trade-mark for 
coffee by Mr. Commissioner Duell in ex parte Shaw, Hammond, 
and Carney, (68 MS. Dec, 229.) 

As this case corresponds in all respects to the 
case cited, the action of the Examiner in refusing 
to register the word "Yale " as applied to hosiery 
was right, and it is affirmed. 





d f fftf. /d 6 J 




/ 



oOMJiissiom's EEoisioirsr 



Ex parte Gill Brothers Coan^.xSs' 

Decided February 12, 190U. 

Trade-JIarks-Ikterference-Abaxdonment ev Registrant 
Where an applicant for registration of a trade-mark which 
has been registered by another files affidavits making out a 
prima face case of abandonment of the mark by the -ens" 
trant, Held that an interference should be declared to deter- 
mine the question of abandonment and the present ownership 
of the mark. r - 

On PETITION. 

trade-mare for glassware. 

Application for registration filed June 22, 1903; 

Messrs. Steuart & Steuart for the applicant. 
Allen, Commissioner: 

This is a petition that the above-entitled appli- 

cationfor the registration of atrade-markbeplaced 

£*™! rf ^'- ence with registered trade-mark No, 
-0,190 to M-m. Foester & Company. 

, . The Examiner says that the marks are substan- 
tially the same and are applied to substantially the 
same merchandise, and he has rejected the appli- 
cation on the registered mark. The applicant does, 
not claim to have been the first to adopt the trade- 
mark, but claims that Foester ^Company have 
abandoned its use and that the Gill Brothers Com- 
pany is now the lawful owner of the mark and 
wishes an opportunity to show that fact. 

The right to registration depends upon the pres- 
ent ownership of the trade-mark, and it is clear 
that priority of adoption alone does not establish 
present ownership. It depends upon present use. 
of the mark, and to retain title to a mark once 
adopted there must be continuous use of it there- 
after. If after adopting a mark its use is aban- 
doned, the field is left open to others, and one who 
subsequently adopts it and uses it continuously 
may acquire title to it. 

The question of abandonment therefore maybe 
a material one in the interference and may control 
the decision. The applicant in this ease lias raised 
the question of abandonment and has filed affida- 
vits as to it, making out a. prima facie ease. The 
burden of proof is on it; but it should be given an 
opportunity to prove its allegations, and it is be- 
lieved that the declaration of an interference is 
the proper way to afford that opportunity. 
The petition is granted. 





— 



n 



EX PABTE A. WhABB & SONS 00»«* 



1. Trade-Mare,- 



Decided February SO, ««'<• 

»i Qt-nVAME NOT REGISTRABLE. 

Engelhard "—Sea. . __,,!„„,. 



rt" written in ordinary 
The ordinary surname '^ e "^ clo ud-bank fleM not 
f copy-book script upon a picture or a 
registrable as a trade-mark. 




8. Same-Name of Applicant. . .,„_ , „ mar k which is 

The statute prohibits the f.^s r at™ £ * ™ where ib» 
merely the name of the applicant, and 



tierefore where ' 
hibition o£ the statute. 

8. SAHE-SAME-ACCESSORrES WITH NAME-B --*« ^ 

' h6inWWt t ins^nT^^^and ^y thense : 



to be avoided by insig 



which rise 



into such relative importance as 



mere name as to render it of minor 



importance in the whole 



T ff ect p-duTed upon the mind of the observe, 

, SAME-SAME-NAME MUST BE ^ESS™ 

The ^-^--?2SS?SS the name be--' 



element in 



the mark to be carried so 



negligible or non-essential factor in 






the whole effect 
if rhTreXoTtne mark should remain and 
SS£S?4Kii wou!d not present a substan- ■ 
nearance. 

-Infringement, e* 




tially different appearance. 

5. SAME-SAME-TEST OF REGISTRABILITY 

Thfform ft mark presented must be regarded as merelyj 
til name of the applicant where the mere name printed in 
the ordtaarv way by a rival merchant upon the same class of 
goods w^uMcTeYteconfusion-in other words, where themero 
name would infringe. 

6. SAME-SAME-SUBSTITUTE FOR NAMES-PERVERSION OF TRADE- I 

Trade-marks are primarily intended to be indexes of origin 
substituted for the name of the maker, and therefore to at- 
tempt to insert among the characteristics of trade -marks 
those names which it was the primary purpose of trade-marks 
to supplant is a tendency in the wrong direction and a per- 
verted use of the trade-mark. 
7 Same— Same— Nasies Should Be Excluded. 

If names were entirely excluded from trade-marksand were 
then placed in proximity to them upon the goods as used, the, 
right separation of the registrable and non-registrable ele : 
ments would be best made. 
8. Same— Same— Unfair Competition. 

The protection to be given to the mere name will be de? 
rived from the principles governing unfair competition and 
not from the technical ground of trade-mark. 

On appeal. 

TRADE-MARK FOR GROCERIES. 

Application for registration filed June 24, 1909J 
No. 06,082. 

Mr. Henry Schreiter for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Exani-j 
iner of Trade-Marks refusing to register's trade-! 
mark for tea. The applicant's description of its 
trade-mark is in the following words: 

The trade-mark, as represented in the accompanying f acsim- 1 
ile, showing the picture of a cloud-bank, whereon the letters 
E, n, g, e, 1, h, a, r, d, are arranged on a line ascending from the 
left to the right, and a stroke, beginning at the letter d, drawn | 
at an angle to the line on which the letters are arranged and 
'terminating in a curve. The letters are produced in the same 
color as the cloud whereon they are set, but the color of the 
letters is of darker tint. On the light side of the letters, a white 
border and on the shaded side a dark border is provided, giving 
the letters the appearance of relief upon the clouds. 

The Examiner has rejected this mark for the rea- 
son that he finds the word Engelhard to be a com- 
mon surname and finds this to be the salient fea- 
ture of the trade-mark. The applicant contends 
that the mode in which the name is written, with 
the accessories consisting of the cloud-bank, the 
stroke beneath, and the light border about the let- 
ters, takes this mark out from the inhibition of sec- 
tion 3 of the act of March 3, 1881, which provides 
that — 

re alleged trade-mark shall be registered * * * which Is 
merely the name of the applicant. 

It is conceded that Engelhard is the name of the 
applicant. 

This case illustrates one of the attempts fre- 
quently made to avoid the objection which may be 
raised against mere names by some details of form 
and by the use of accessories of moderate impor- 
tance. It should be said in the present case that 
the word is written in conventional copy-book 



r script^Tf, then, tBeTBBrWHBlue ol an applicant j 
cannot be registered as a trade-mark, we have to 
determine in cases of this sort whether the other [ 
5 elements of the mark remove it from the inhibi- 
tion of the statute. It is evident that insignificant 1 
details of the mark will not suffice to make th« I 
whole composition distinct from the mere name, ! 
rind therefore registrable. 

To determine in any particular case whether the 
form of mark presented for registration is merely 
the name of the applicant, we may consider whether 1 
the use of the mere name printed in the ordinary 
way by a rival merchant would create confusion, 
for the reason that the impression created by the 
mark as used would be substantially the impres- 
sion created by the mere name. Thus we may ! 
measure the relative values to be given to the 
mere name and those to be given to its formal at- 
tributes and accessories in the total visual effect 
produced. If the mere name printed in the ordi- 
nary way would create so nearly the impression 
created by this mark as to render the user of the 
mere name an infringer, then to protect this mark 
as a trade-mark would be to protect the mere 
name, to which the statute expressly refuses pro- 
tection. If accessories are to save the mere name 
from the inhibition of the statute, they must rise 
into such relative importance and must so dwarf 
the mere name as to render this latter of minor 
importance in the whole effect produced upon the 
mind of the observer and to prevent such result of 
infringement as just mentioned. In fact, it seems 
to me that a due regard to the spirit of the statute 
requires the reduction of the name element in the 
mark to be carried so far that the name becomes a 
negligible or non-essential factor in the whole effect 
produced, so that if the rest of the mark should 
remain and the name should be changed it would 
not present a substantially different appearance. 
It is evident that reduced to this relative impor- 
tance the name might as well be omitted from the 
mark. It seems that if names were entirely ex- 
cluded from trade-marks and were then placed in 
proximity to (them upon the goods as used the 
right ssparationxjf the registrable and non-regis- 
trable elements would be best made, 
It must be remembered that trade-marks are 
primarily intended to be indexes of origin, substi- 
tuted in place of the nameV>f the maker, thus con- 
veying by new and distinct means what might 
otherwise have been conveyed by the name of the 
maker, and thus avoiding the necessity for its use. 
The mark was clearly intended to replace the name 
for this purpose, and therefore to attempt to in- 
sert among the characteristics of trade-marks those 
names which it was the primary purpose of trade- 
marks to supplant S3ems to be a tendency in the 
wrong direction— a perverted use of the trade- 
mark. 

Whatever protection may be given to the mere 
name will be derived from- the principles govern- 
ing unfair competition, and the protection afforded 
by courts of equity in eases of unfair competition is 
as complete as that afforded within the technical 
ground of trade-marks. The two fields are contig- 
uous, but need not on that account be confused. 
There is a fine of principle which divides them. It 
must be a rare case— one in which the elements are 
blended with unusual skill— where the name can be 
said to enter into the effect produced by the mark 
and not constitute a mere label upon it. 

Being of the opinion that the mark under con- 
sideration presents an appearance so little modi- 
fied from the name used alone as to make the modi- 
fications comparatively insignificant, I conclude 
that this mark is not properly registrable under 
the statute, and the decision of the Examiner re- 
fusing to register it is affirmed. 



9 



Case No. 65,500. 



Piled April 7, 1902. 




(COPY.) 



DECISION. 



1* E.arte Sanitas Nut Pood Co., Ltd., 70 MS. Ij i. 



464. 






"In view of the facts that the word 'Sanitas' was regis- 
tered to Kellogg, 33,972, on January 2, 1900, for a trade-mark 
which is to be applied to a product made of grains and huts, 
and that the applicant is the owner of the registered mark, and 
that the goods upon which this registration is sought differs 
in some respects from the goods to which the registered mark is 
applied, it is thought that this second registration should be 
permitted. While it is well settled that a word which is not 
registrable as a trade-mark cannot be made registrable by trans- 
lating that word into a foreign language, it is thought that 
there is doubt as to whether this principle applies to this case. 

"In view of all the circumstances, it is thought that the 
registration prayed for should be permitted. 

"The decision of the Examiner of Trade -Marks is reversed." 

P. I. Allen, 

Commissioner. 



April 18, 1904. 



S7 




Irf.J^f. 









PARTE JEWELL BELTING COMPANY. 
Decided April 6, ISOh- 

11 r^nr-RAPHICAI- WoRD— ARBI- 
TRADE • MARKS-" GIBRALTAR" GEOC.BAPH.C 

. BAH-^^-^^SS^ningof firmness 
meaning of comparative ms.gmficance. 

On appeal. 

TRACE-MARK K0R «-^^.^™"V°°TO 14 4. 

Application filed February 8, 1904, No. TO 
Mr Harry JB. W«K«iu for the applicant. 

TanST^te same word was refused reg- 
ion, 'in the aborted ^^Sr^-* 

ieal meaning : ^^^ ^ch is strength it 
tJ."S wer, maoufactared at <H* 

™ff£AXmtai»S« 'A Trade-Marks i. 
reversed. 



//o <hf. &*{■ 



COMMISSION'S DECISIONS, 




-De- 







EX TAKTE SMITH. 
Decided March 22, 190U. 

,. TrASE-MAKK-"*^* 1 *" *°» MASSAGS-SPO^S- 

scaiPirWi. OTAPT , w en» is descriptive of a quality 

Hdd that the vrord "Kleanwell * ^ r is . 

possessed by a massage-sponge, and thereiore 
trable as a trade-mark for the same. 

^^SE£ EK~ registry because it 
is misspelled. 

SiME -COMnI N E D W0R D -N0T EEGISTR^ notr 

Hddthat several words wmch are descnpuve 
istrablefor that reason do not become registrable 
they are combined into one word. 

ON APPEAL. 

TRADE-MARK FOR RUBBER SPONGES. 

Messrs. Ralston & Biddons and Mr. Edwin h. 
Clarltson for the applicant. 
Allen, Commissioner: 

This is an appeal from a decision of the * E am 
iner of Trade-Marks refusing to register the word 
^e a n W ell"a S afede--markform a ss a ^-spo D ges, 

The Eiaminer bases his action on.Megio-na 
thattheword-KleanweUMsdescriptiveofaquah 

-ity of the merchandise on which it is used, in 
other words, that the word indicates that the 
Sngs if used for cleaning purposes is capable of 
satisfactorily performing that function 

When the application was originally filed .the 
merchandise upon which the trademark wtf to 
be used was described in the specification as fol- 

comprised in such class upon which I use U 
rubber sponges. 

The merchandise being described genencaUy as 
toilet articles and specifically as rubber sponges, 
the Examiner was clearly right in ^<*«»"**g* 
the word " Kleanwell « was descriptive of a quality 
^A by the sponge, as it is wbII known ha 
the principal use of a sponge is to clean objects 
nrjon which the sponge is used. 

The principles announced in the decision ex 
parte MiMer, (05 O. G,, 1453,) where the word I\t- 
measy" was refused registration as a trade-man* 
for corsets, is applicable to this case. 
. The applicant seeks to overcome the rejection 
by an amendment to his specification limiting the 
snecific class of goods to "massage-sponges. He 
states that the sponges are to be used for massage 
and skin culture and not for cleaning purposes. 
It is apparent, however, that the sponge is equally 
adapteffoVa cleaning sponge and that rts use to 
that nurpose would be satisfactory ^twUi 
standing the fact that the particular class of gooes 
is not stated to be limited to massage^pongee, A 
is clear from an inspection of the sponge , j.sjm- 
pie of which has been submitted, that tne wcid 
« Kleanwell" is descriptive of a quality possessed 

bv that article. - '. 

ThisWd, which is purely descriptive and not 

registrable for that reason, does not become ngu- 
trfblebecauseitisn^spelled.^^ar^nd,^ 

85 O G., 450;) neither is it registrable because two 
descriptive words are combined into one wovcL 
(Ex parte Alabama Tube & Hon Company, f 

The decision of the Examiner of Trade-M&rksis 
affirmed. 










6 



oO- 



U/arf-td* 



OOMMI'SSIOHER'S DECISIONS, 



' flf)^ 




Wood v. Hihchmau 

Decided March 2, 190k. 
Trade-Mark Interference—" Satin," " Satin Skin," and " Sat- 
inette" — Identity of Mark. 
Where H. claims the word " Satinette " as a trade-mark and 
W. claims " Satin " and it is admitted by H. that W. acquired, - 
the right to the words "Satin Skin" before his date of use, 
Held that priority must be awarded to W., since the three 
marks are substantially the same. 

Appeal from Examiner of Interferences. 

TRADE-MARK FOR MEDICINE. 

Application of Albert F. "Wood. Trade-mark of 
Mary E. Hinchman registered February 10, 1003, 
No. 39,776. 

Messrs. Bacon & Milans for "Wood. 

Mr. [James W. Bevans for Hinchman. 
Allen, Commissioner: 

This is an appeal by Hinchman from a decision 
of the Examiner of Interferences awarding prior- 
ity of adoption and use of the trade-mark in issue 
to Wood. 

The issue of this interference is: 

The word " Satin " or the word " Satinette," f orlotions,creams, 
cosmetics and pastes, for diseases of the skin and as toilet prepa- 
rations. 

Hinchman registered the word "Satinette" as a 
trade-mark for the goods denned in the issue on 
February 10, 1903. She has taken no testimony, 
relying for her case upon the prima facie evidence i 
of ownership established by her registration under 
section 7, chapter 138, in the trade-mark statute of 
1881. 

In the brief for Hinchman on page 9 is the fol- 
lowing statement: I 

The mark that Wood has been usirjg is " Satin Skin " arranged 
as shown by Ex. X-Q. 1 and D, and we will admit use of this mark 
in this country prior to our registration, but contend that use 
of this mark is not use of the mark " Satin; " that it is a differ- 
ent mark, and that it would be so regarded by dealers and con- 
sumers. 

As held by the Examiner of Interferences, this 
admission is sufficient alone to warrant judgment 
being awarded in favor of Wood. The contention 
that the trade-mark " Satin" is a different mark 
from " Satin Skin " is not well founded. There is, 
scarcely any more difference between the words 
' ' Satin Skin " and ' ' Satin " than there is between 
the words " Satin " and " Satinette." 

It must be held that the words " Satin," " Satin- 
ette," and "Satin Skin" are essentially the sam3 
trade -mark when applied to the same class of 
goods. 

The decision of the Examiner of Interferences 
awarding priority of adoption and use of the trade- 
mark in issue to Wood is affirmed. 



//3 ^.(po^ 



COMMISSIWEH'S DECISION/ 



Ex PARTE KlFPE AND DlSCH. 
Decided April 12, 190U. 
Trade-Marks—" Special "—Descriptive. 

The word " Special " Held not registrable as a trade-mark, 
since it is descriptive of the grade or style of the gooda. 

ON APPEAL. 

TRADE-MARK FOR BASE-BALLS. 

Application filed April 4, 1903, No. 67,986. 

Mr. Smil F. Gennert and Messrs. H. C. Evert & 
Co. for the applicants. 
Allen, Commissioner: 

This is an appeal from the action of the Exam* 
iner of Trade-Marks refusing to register the word 
" Special" as a trade-mark for base-balls. 

The Examiner states that in his opinion — 

the word "Special" as applied to base-balls would indicate that 
the base-balls were of a particular species or sort, kind or char- 
acter and distinct from other kinds. The word "Special" in- 
dicates, therefore, the grade or kind of ball manufactured by 
the applicant and is not an arbitrary and fanciful mark indica- 
tive of origin and ownership. . •, 

In the case of ex parte Luyties Bros. (23 MS. 
Dec, 244) the word "Special" was refused regis- 
tration as a trade-mark for wines and liquors on 
the ground that it was indicative of the grade of 
the goods to which it was applied. 

In ex parte Nichols and Shepard Company (99 
O. G., 1623) the words "Red River Special" were 
refused registration as a trade-mark for agricul- 
tural machinery on the ground that the words 
"Red River" were geographical in meaning and 
the word "Special" was indicative of grade or 
style and to that extent descriptive of the goods to 
which it was applied. 

The word " Spesial " when applied to base-balls 
has the same meaning- as when applied to the goods 
which are specified in the above-cited decisions. 
The principles there announced apply equally as 
well to this case, and the Examiner's decision is be- 
lieved to be right. 

The decision of the Examiner is affirmed. 




63 



/// ^f sJte 



OOMMISBIOMIB'S DECISION. 




/ff.fif- 




"Th re Laundry Blue Company. 

Decided March S, 190A. 

IlGNMENTS OF TRADE-MARKS— MUST IDENTIFY CASE. 

Assignments of trade-marks will notbe recorded unless they 
identity same application or registration. 
In the matter of the request of The Laundry Blue 
Company for the recording of certain instruments 
purporting to be assignments of a trade-mark. 
Allen, Commissioner: 

This is a petition that certain instruments in 
writing, purporting to be assignments of a trade- 
mark consisting of the words "Wiggle Stick," be 
recorded in this Office. 

The instruments do not identify by date and 
number any registered trade-mark or any applica- 
tion for registration, and for that reason they were 
not recorded. The rules require assignments to 
identify the application before they will be re. 

corded. 

There are vast numbers of trade-marks which 
are not registered in this Office, and there seems to 
be no reason why this Office should record assign- 
ments of such trade-marks. It is justified in re- 
fusing to record instruments which do not identify 
applications or registrations. 

The petition is denied. 









Auerbach & Sons v. Hall & Hatward' Com- 
pany. • ■ 

Decided April 21, 190k. 
1, Trade-Mark— Interference— Weight to be Given Testi- 
mony of Adoption and Use Prior to Date Given in State" 

STENT. 

While the testimony of an alleged adoption and use prior to 
the date alleged by the registrant in his statement may be re- 
ceived and considered, Held that where the registrant filed 
in 1892 and alleged no date prior to March 9, 1890, the testi-^. 
mony of a witness that the mark was issued in 1888 is not suf . 
ficient to establish this earlier date when the witness testifies 
solely from memory some fifteen years after the alleged 
adoption and use. 

Z. Same— Same— Same. 

It is to be presumed that the statement filed with an appli- 
cation for registration was made after; proper inquiry, and 
while it is not binding upon the parties to an interference'- 
proceeding it is still entitled to considerable weight. 

8, Evidence— Admissibility of Books Kept by Private Par- 
ties in the Ordinary Course of Their Business. 
A rent-book kept by a private party in the ordinary course 
of his business stands upon the same footing as the books of 
the trader or merchant. ^For entries in such books to be ad- 
missible it is not merely necessary that they be made con- I 
teinporaneous with the facts to which they relate, but it is 
necessary that the entries be made by parties having personal 
knowledge of the facts and be corroborated by their testi- 
mony if living and accessible or by proof of their handwriting 
if dead or insane or beyond the reach of the process of com- 
mission of the court. 

4. Same— Same. 

Such a rent-book is not evidence per se; but with the testi- 
mony of the person who made the entries' 'all objection was 
removed and the book was properly admittedin evidence. 

5. Same— Sufficiency of Rebuttal Evidence. 

Where the junior party to establish a material date called 
witnesses who testified from recollection that their company 
moved from a store on New Year's of 1888 and the senior party 
introduces record evidence showing that they paid rent for 
this store until October, 1890, Held that the rebuttal testi- 
mony of a clerk in the employ of the junior party that h^. 
was sent to collect rent from a tenant who had sublet this^ 
store is not sufficient to rebut the presumption from the 
record evidence that they occupied the store at that time i 
particularly as neither the alleged tenant nor the member of 
the firm from whom she is alleged to have sublet were called 
or their absence satisfactorily accounted for. 

6. Trade-Mark— Abandonment— Rights of Unauthorized 

User. 
A firm cannot appropriate a trade-mark belonging to an- 
other and subsequently acquire a good title thereto by the 
proved abandonment of the mark by the first proprietor. 

7. Same— Interference Between Applicant and Registrant— j 

Proofs Not Convincing — Second Registration Not 
Granted Until Common-Law Right Proved. 

A Where the testimony introduced in behalf of the applicant 
for registration seeking to establish prior adoption and use is 
far from satisfactory, Held, that a second trade-mark for the 
same class of goods will not be registered until the applicant 
has proved his common-law right to the trade-mark in a court 
of competent jurisdiction. 

Appeal from Examiner of Interferences. 
trade-mark for confectionery. 

Application of D, Auerbach & Sons filed May 16, 
1903, No. 68,295. Trade-mark registered by Hall & 
Hayward Company March. 15, 1892, No. 20,843. 

Messrs. Munn & Co. for D. Auerbach & Sons. 

Messrs. Offield, Towle & Linthicum for Hall & 
Hayward Company. 
Allen, Commissioner: 

ThijS is an, appeal by Auerbach & Sons from the 
decision of the Examiner of Interferences award- 
ing priority of adoption and use of the trade-mark 
" Golden Ro d" for candy to <;he Hall & Hayward 
Company. 

It appears that this latter company registered 
their trade-mark on March 15, 1892, and that D. 
Auerbach & Sons did not file their application in. 
volved in this interference until some eleven years 
thereafter, on May 16, 1903. 



Theevidence shows that in 1894 the firm of D- 
Auerbaeh 8p Sons was formed by D. Auerbach tak- 
ing in partnership his three sons. (Q.37.) A. Leo- 
pold Auerbach, one of the sons, testifies as follows: 

A. D. Auerbaeh was carrying on a small manufacturing and 
jobbing business at 693 Ninth avenue. In 18S7 he had established 
a little reputation for some goods manufactured by him. He 
was anxious to put them up under a brand not then known to 
the trade. Mr. George O. Scheerer, who was at the time selling 
candies for E. Greenfield Sons & Co., 44 Barclay street, called 
to see some goods. When made familiar with the wishes of D. 
Auerbach to establish a brand he suggested "G oldenrod ." The 
matter was under* consideration for two or tnree months, and 
finally when D. Auerbach moved in larger quarters at 691 
Eighth avenue, on New Year's, 1888, we requested Mr. George 
Hirschi>6K£ of 307 W. 39th street, to have a cut made from which 
We could get this brand l L Goldenrod ' ' lithographed and printed, 

X-Q. 42. On what day or in what month did you or D. Auer- 
bach get the first printing pr lithographing of this brand " Gold- 
enrod" done? 

A. In January, 1888. 

X-Q. 43. How do you know it was in January. 1888? 

A. That was the time D. Auerbach moved to 691 Eighth ave- 
nue into larger quarters and put up goods under that brand 
" Goldenrod ." 

The testimony of Auerbach, Sr., the printer 
Hirsehb erg. who printed the labels, and the retail 
dealers Post and Vondron, who bought of Auer- 
bach, Sr., substantially corroborates A. Leopold 
Auerbach. Scheerer, who originated the idea of 
using the trade -mark " Golden Rod " for candy, 
testifies that he did not suggest this trade-mark to 
the Auerbachs until "the latter part of 1888 or the 
early part of 1889 " (Q. 19) and that he saw in 1889 
boxes containing candy manufactured by them 
marked with the words " Golden Rod ." (Q. 20.) 

With one exception Ihese witnesses all fix their 
dates merely on recollection of events happening 
some fifteen years prior to the taking of their tes- 
timony. This one exception is the fact that they 
all testify that it was shortly after D. Auerbach 
moved from his store at 693 Ninth avenue to 691 
Eighth avenue, which they testify occurred on New 

Tear's of 1888. , 

When Hall and Hayward took their testimony, 
they put on the stand Frederick Eckhardt, who 
testified that he was in the real-estate business and 
attended to the renting of 693 Ninth avenue, and 
at no time during the years 18S8, 1889, and 1890 did 
D Auerbach or D. Auerbach & Sons occupy any 
part of this building. (Qs. 6 and_7.) They also 
called William H. Barklage, who testified that D. 
Auerbach moved into the house owned by his 
father at 637 Ninth avenue on the 1st of May, 1889, 
(Q. 9,) and remained until some time in November, 
1890.' (Q. 10.) In testifying he refreshed his rec- 
ollection from a rent-book. (Q. 18.) It was stipu- 
lated that the material items should be copied 
into the record, without the introduction in evi- 
dence of the book, with the same force and effect 
as though the rent-book had been introduced as 
an exhibit, but without waiving the objection of 
opposing counsel that the book was not one of 
original entry and was mere hearsay evidence. 

This book was kept by the witness and his 

f-ith-r (Q 20) for the period from September 3 f ', 

I 1880 to February, 1893. (Q. 21.) The first entry 

I for the receipt of rent from D. Auerbach is on page 

77 and on every page up to page 92, (Q. 24,) the 

first entry being in the year 1889, as follows: 

May 6th, D. Auerbach, store and cellar, 637 Ninth Ave. $40, 
(Q. &) 

The last entry is on page 92, and under date of 
October 8 1890, there is a record of the usual rent 
of $40 from D. Auerbaeh. These entries were 
made partly by the witness and partly by his 
fa ^ker (Q 30,) and all were made in regular course 
of business and about the respective times when 
the money was paid for rent. (Q. 83.) The wit- 
ness testifies that his father is now deceased and 
that this book since his death has been in his own 
personal charge. 

When the Hall (and! Hayward Company filed 
their application in February, 1892, they alleged, 
through their president, Barnett, that their trade- 
mark "had been. used continuously by said corpo- 



ration " since March 9, 1890." In presenting their 
proofs, however, they called the witness Rose 
Loeschner, who had been in their employment 
from 1875 (Q. 3) until about 1896 or 1897. (X-Q. 55.) 
By her testimony they seek to establish that they 
had adopted and used the words "Golden Rod" 
on candy at least by the early fall of 18SS. (Q. 21.) 
The testimony of this witness as to the early 
adoption by this corporation of the trade-mark in 
issue is not convincing. She was asked: 

Q. 13. Did the corporation, Hall & Hayward Company, use 
any trade-mark or special label for its goods during the time 
you were in its employ? 

A. Not a special label thct I know o f . 

Q. 11. What kind of labels did it use? 

A. I wasn't, in the factory; they didn't have any labels in the 
store, onlj- on the boxes, the cracker -label. It was then called 
Hall & Hayward Fall City Bakery. 

Q. 15. What, if any, brand did this company put up its candy 
under? 

A. Just the same as the crackers. 

Q. 16. And what was that? 

A. I don't remember the labels, the same as the cracker-label, 
Fall City label. 

Q. 17. While you were saleslady in the retail department, did 
the boxes or packages have any label or mark upon tnem other 
than the kind of goods? 

A. No other. 

Q. 18. Please mention what name or names they sold the can- 
dies under? 

(Objected to as leading.) 

A. Hall & Hayward. 

Q. 19. Did the.packages bear any picture or mark of any kind 
beside.the name? 

A. None that I remember. 

Yet.in answer to a leading question whether she 
had ever heard of the trade-mark " Golden Rod" 
she answered that she had (Q. 20) and then pro- 
ceeded to testify that it had been used by this 
company in 1888, a date long prior to that alleged 
by the president of the corporation in his applica- 
tion for registration filed in this Office. While the 
testimony of an alleged adoption and use prior to 
the date alleged by the registrant in his statement 
may be received and considered, (Sherwood v. 
Horton, Cato & Company, 84 O. G., 2018; C. D., 
1898, p. 629,) still in this-case it must be held that 
where the witness testifies solely from memory 
some fifteen years after the alleged adoption and 
use her testimony is not sufficient to counterbal- 
ance the sworn statement of the president of the 
corporation filed in 1892 that his corporation had 
used the mark continuously only from March 9, 
1890. It is to be presumed that this statement 
filed with the application for registration was 
made after proper inquiry, and while it is not bind- 
ing upon the parties to an interference proceeding 
it is still entitled to considerable weight. Neither 
Barnett nor any other officer of the corporation 
was called to establish that this positive statement 
filed with his application was erroneous. It must 
therefore be held that the testimony of Rose 
Loeschner is not sufficient to establish on behalf 
of the Hah&Hay ward Company any date of adop- 
tion and use of the trade-mark in issue prior to 
March 9, 1890, the date alleged by Barnett, the 
president of the corporation. 

As the Hall and Hayward Company is therefore 
limited to May 9, 1900, as their date of adoption 
and use, decision must be rendered against them 
if D. Auerbach & Sons have proved by convincing 
evidence that they adopted and used the mark in 
issue upon January 1, 1888, when they moved from 
Ninth avenue to Eighth avenue, as they and their 
witnesses have testified. 

Their testimony as to this date based upon recol- 
lection is rebutted, as noted, by the testimony of 
Barklage, supported by his rent-book. If the po- 
sition taken by D. Auerbach & Sons tha t tl i i 
is not a book of original entry, that it is secondary 
evidence, and therefore not properly introd 
in the record, is well taken, then Barklage's 
inony cannot be said to successfully rebut the 
testimony of the Auerbachs and their witn< 
If, however, it is entitled to full weight, then it is 
established beyond peradventure that J>. Auer- 
bach & Sons at least paid rental for the store and 
cellar at 637 Ninth avenue until November, 1SU0. 






■H 



- -■■ 






ff 



It is testified that this book waskeptintneregu 
lar course of business by Barklage and his father. 
The first entries were made several years before 
the date upon which Auerbach's entries appear, 
and it was kept for the purpose of entering rents 
for at least eight years after the Auerbachs ceased 
paying for the store on Ninth avenue. The objec- 
tion that the book is not one of original entry does 
not appear to be well taken, for the unrebutted 
testimony of Barklage is as follows: 

I had nothing to do with the renting of the premises; my 
fitber did all the renting, but the rent would be brought mto 
the office, and if my father was there he received the rent and 
entered it in the book, and if I was there I would receive it and 
hand it over to him. t , . , „ 

Witness here points to the book of account hereinbefore re- 
ferred toin this testimony. (X-Q. 37.) 

It therefore appears from this testimony that the 
book was not only kept in the regular course of 
business, (Q. 32,) but that either he (Q. 30) or his 
father after the rent was paid " entered it in the 
book," which is the one objected to by counsel for 
Auerbach & Sons as being hearsay and not the' 
book of original entry. Tri Chaffee v. United States 
(18 Wall., 516) the Supreme 'Court said: 

When the books were offered, objection was taken to their in- 
troduction , on the general ground that they were hearsay evi- 
dence and transactions between third parties. * * * 

The books were not public records; they stood on the same 
footing with books of the trader or merchant. * * * Their 
admissibility must, therefore, be determined by the rule which 
governs the admissibility of entries made by private parties in 
the ordinary course of their business. 

And that rule, with some exceptions not including the present 
case, requires, for the admissibility of the entries, not merely 
that they shall be contemporaneous with the facta to which 
they relate, but shall be made by parties having personal knowl- 
edge of the facts, and be corroborated by their testimony, if liv- 
ing and 1 accessible, or by proof of their handwriting, if dead, or 
insane, or beyond the reach of the process or commission of the. 
court; 

The same Court said in Insurance Company v. 
Weide, (9 Wall., 677:) 

There can be no doubt but the day-books and ledger, the en- 
tries in which were testified to be correct by the persons'whd; 
made them, were properly admitted. They would not have 
been evidence, per se, but with the testimony accompanying 
them all objections were removed. 

Following these decisions, it is held that the ob>\ 
jection urged against the admissibility of this rent 
book is not well taken, that the excerpt from it is 
properly in evidence, and that it establishes that 
D. Auerbach paid rent for the store on ITinth ave- 
nue from May 6, 1889, until October 8, 1830. 

To overcome the strong presumption based on 
this testimony that D. Auerbach did noif move 
from the Ninth avenue store until some time in No- 
vember, 1890, the Auerbachs in rebuttal called Ohl, 
who testifies that he was employed for general of- 
fice work by the Auerbachs in February 1889, (Q. 3,) 
and at that time the firm was located on Eighth 
avenue, New York, and that while in their employ 
D. Auerbach several times sent him around to a 
store on Ninth avenue with a number in the six 
hundreds (X-Q. 39) to collect rent from a widow 
who had sublet the store from D. Auerbach (X-Q. 
78) and that this rent he turned over to D. Auer- 
bach. It was his opinion that the landlord of the 
store from whom D. Auerbach sublet to the widow 
was named "Barklage." (X-Q. 78.) 

On this testimony of this one witness the Auer- 
bachs now seek to establish that though they did, 
pay rent for the store on Ninth avenue until Octo- 
ber, 1890, they had sublet the store to a widow, who 
sold candy at retail. (X-Q. 80. ) They thereby seek 
to avoid the effect of the rebuttal testimony of 
Barklage, supported by his rent-book, by now ar- 
guing ijhat they had a lease upon the store upon 
Ninth avenue which required them to pay rent 
until October of 1890, though they had moved out 
of the store by January 1, 1888, as testified by them 
and their witnesses. 

It is a rather peculiar fact that after Barklage's 
testimony that they paid rent up to October 8, 1890, 
for the Ninth avenue store they merely called a 
clerk in their employment to testify to an alleged 
lease between D. Auerbach and Barklage, Sr., now. 
deceased. With the burden of proof heavily upon 
them it was clearly incumbent upon them to at 
least place upon the stand Auerbach, Sr., in whose 



.' 



name the business was at that time conduci 
testify, if such were the fact., * hat he had a lea8e 
upon this store which did not expire until October 
or November of 1890 and that he had sublet the 
store to the widow who conducted the retail candy 
business. This they omitted to do; nor did theyj' 
call the woman who is alleged to have sublet the i 
store from them up to October of 1890. The ab- 
sence of her testimony is not accounted for; nor 
can it be urged that they could not obtain the tes- 
timony of D. Auerbach, for he is at present a mem- 
ber of the junior party's company and had pre- 
viously testified in this interference. 

It is not sufficient for them, therefore, to avoid 
the testimony of Barklage that they paidrent upon 
the Ninth avenue store up to October of 1890 by 
alleging through a clerk in their employ that they 
had sublet the Ninth avenue store until this latter 
date, and hence could have moved to the Eighth 
avenue store on January 1, 1888. Instead of mov- 
ing on January 1, 1888, from the Ninth avenue store 
to the Eighth avenue store Barklage's rent-book 
shows that the Auerbachs did not even move into 
the Ninth avenue store until May 6 y 1889. 

It must therefore be held that the testimony of 
Auerbach & Sons that they adopted and used the 
trade-mark " Golden Rod" for eandy immediately 
after their removal tb'the Eighth avenue store on 
January 1, 1888, is not supported by the evidence. 
On the contrary, the earliest date which they could 
possibly rely upon is some time in the year 1891. 
This is because they did not adopt this trade-mark 
until after they had moved to the Eighth avenue 
store, which event, as established by the evidence, 
did not occur until after October of 1890. 

The testimony of A. Leopold Auerbach and 
Scheerer is material as to the date when D. Auer- 
bach first used the trade -mark. Scheerer was 
asked: 

You recollect, do you, that the suggestion you made to himj 
about " Gfoldenrod " was after he commenced doing business in 
the store wherehe went in 1888? (Same objection.) 
. It was about the first month or two he started that business, 
- "£="-"£ s»« ,'v.o inpi 

As D. Auerbach testifies that they began to use 
the trade-mark after the first of the year (Q. 11) 
and it is established th at they did not leave the 
Ninth avenue store until late in the year 1890, the 
earliest date the Auerbachs testimony can estab- 
lish is the first of the year of 1891. 

It is not to be overlooked that Scheerer testifies, 
as noted, that he did not suggest the trade-mark 
' ' Golden Rod " for candy until a month or two after f 
D. Auerbach had moved to the Eighth avenue store ; 
yet Joseph S. Auerbach testifies that on January 1, 
188S, when they moved from the Ninth avenue store, 
they took with them some twenty-five thousand 
labels (Q. 17) bearing the trade -mark "Golden 
Rod." (Q. 16.) 

Certain letters from the - Hall & Hayward Com- 
pany have been introduced in evidence which D. 
AuerbachigSons contend show that after they had 
registered the trade-mark ' ' Golden Rod " for candy 
the Hall^n^Hay ward Company abandoned their 
right to its use. Without passing upon the suffi- 
ciency of this evidence to show abandonment of 
the trade-mark, it is merely necessary to state that 
a firm cannot appropriate a trade-mark belonging 
to another and subsequently acquire a good title 
thereto by the proved abandonment of the mark 
by the first proprietor. (O'Rourfce v. Central City 
Soap Company, 26 Fed. Rep., 576.) 

A. Leopold Auerbach further testifies that as far 
back as 1892 or 1893 they had knowledge that the 
Hall & Hayward Company were using the trade 
mark " Golden Rod " upon candy (X-Qs. 80 and SI) 
and that they wrote to Hall and Hayward "calling 
their attention to the alleged trespass upon their 
rights. They, however, took no steps to register 
their trade-mark until some eleven years thereafter. 

The circumstances of this case are very similar 
to those in Sherwood v. Horton, Cato & Company, 
supra, where it war «ni<i- 



bherwoodwaitc.i nt registry be- 

rore seeking to register the mark, and during eight of those 
years Sherwood had knowledge of the claimed right of Hor- 
ton, Gato & Company, if the testimony of Eichhorn is to bebe- 
ueved. * * * 

I do not think that the Patent Office should register a trade- 
mark in the face of a prior regisl ration of Che same mark for 
exactly the same class of goods unless the proofs are so clear 
and convincing that to refuse to do so would work an injustice 
to the applicant. In the case at bar the proofs of adoption and 
use are not so clear and convincing as to warrant me in grant- 
mg the registration to Sherwood; certainly not until he has 
proved his common-law right to the trade-mark in a court of 
competent jurisdiction. So far as the record shows he has made 
no such attempt, and when he has, and has proved his right, 
will be time enough for this Office to register his mark. 

The proofs submitted by D. Auerbaeh & Sons 
are clearly insufficient to establish by a preponder- 
ance of evidence that they adopted and used the 
trade-mark for candy prior to March 9, 1890, the 
earliest date which it is held the testimony of Rose 
Loeschner can establish on behalf of the Hall & 
Hayward Company, and it is therefore held that 
the decision of the Examiner of Interferences 
awarding priority of adoption and use to the Hal] 
& Hayward Company is right, and it is affirmed. 



d~4> 






///.#-<?. ?~77 




OOMMISSIONER'S DECISIONS. 



i 



R. Newberry Company v. Joseph J. O'Don- 

ohue's Sons. 

Decided April 7. 190!,. 
Trade-Mark — Interference — Evidence op Transfer of 
Trade-Mark. 
It is not necessary to have a separate instrument in writing 
transferring a trade-mark, for the right to its use goes with the 
business. 

2. Same— Same— Best Evidence. • 

Where the question is not what are the contents of a written 
instrument, but is merely as to the sale of a business, Held 
that the testimony of the parties to such sale is not secondary 
evidence. 

3. Same— Same— Same. 

Where the parties testify to a sale of a business without in- 
troducing in evidence the inventory upon which the sale was 
based or the books in which entries of the sale were entered, 
they rely upon weaker evidence than they could produce; but 
their testimony as to the sale is not for this reason secondary 
evidence. 

4. Same— Same- Continued Use of Trade-Mark by Former 

Owner. 
In the absence of testimony to that effect it would be con- 
trary to the rules of evidence to hold that a party who testi- 
fies that he had sold the business and good-will had continued 
to use the trade-mark of that business in violation of the 
terms of sale. 

5. Same— Same— Abandonment. 

To establish abandonment it is necessary to show not only 
acts indicating a practical abandonment, but an actual intent 
to abandon the trade-mark. 

6. Same— Same— Evidence of Marking. 

Where all the witnesses do not positively testify that the 
trade-mark "Gold Seal" was used "on'' packages containing 
coffee, but they all testify that it was used "in connection 
with " the sale of coffee, and at least three of them testify 
that packages containing coffee were. " marked and branded " 
with the words " Gold Seal," Held sufficient to establish that 
the coffee was sold in packages on which appeared this trade- 
mark. 
Appkal from Examiner of Interferences. 

trade-mark for groceries, etc. 
Application of J. R. Newberry Company filed 
February 10, 1903, No. 67,595. Trade-mark of Jo- 
seph J. O'Donohue's Sons registered July 13, 1897, 
No. 30,376. 

Mr. Edwin J. Prindle for J. R. Newberry Com- 
pany. 

Mr. Benjamin R. Catlin for Joseph J. O'Dono- 
hue's Sons. 

Allkn, Commissioner: 
This is anappeal by Joseph J. O'Donohue's Sons 



from the decision of the Examiner of Interferences 
awarding priority of adoption and use of the wends 
"Gold Seal" as a trade-mark for coffee to J. R. 
Newberry Company. 

The interference is between Joseph J. O'Dono- 
hue's Sons' mark registered July 13, 1897, No. 
30,376, and an application for registration filed by 
the J. R. Newberry Company on February 10, 
1903. The appellants took no testimony and are 
therefore restricted to the date of their registration. 
The grounds urged by the appellants are, first, 
that there is no evidence of the transfer to its succes- 
sor of an exclusive right of the trade-mark " Gold 
Seal" for coffee by any one of the firms or per- 
sons through whom the appellee claims priority of 
adoption and use except that from J. R. Newberry 
and Company to the J. R. Newberry Company in 
1902, a date subsequent to the appellants' regis- 
tration; second, that the evidence does not exclude 
the continuous use by R. S. Crombie of the trade- 
mark; third, that the evidence does not exclude 
abandonment of the trade-mark by one or more 
of the persons or firms through whom the appel- 
fee claims adoption and use, so that the trademark 
may have become the proper subject of adoption 
by the appellants; fourth, that the evidence does 
not show that the predecessors in business of the 
J. R. Newberry Company placed the trade-mark 
' ' Gold Seal " upon packages of coffee sold by them. 
Before considering the position taken by the ap- 
pellants it is necessary to have clearly iu mind the 
different companies through whom the appellee 
claims priority of adoption and use. The first of 
these companies is Newberry and Crombie, who 
conducted a wholesale and retail grocery business 
at Riverside, Cal., in 1886. (Newberry, Q. 14; Crom- 
bie, Qs. 4 and 5.) In 1888 or 1889 Newberry sold his 
interest in the firm to a brother of Crouibie's, ( New- 
berry, RDQ. 1,) and the business was continued 
under the firm-name of Crombie and Crombie. 
(Crombie, Q. 12.) -This firm remained in business 
about one year, (Q. 15,) when R. S. Crombie pur- 
chased his brother's interest in the firm and con- 
tinued the business under the name of R. S. Crom- 
bie (Q 20.) In the spring of 1890 he sold his en- 
tire interest to J. R. Newberry and Company, who 
carried on the business under this name (< r,„„- 
bie Q. 20; Newberry, RDQ. 4.) The busmess was 
continued at Riverside, Cal., under th.s firm-name 



_____ 



rf/ 







from 1890 to 1803, when Newberry moved the busi- 
ness to Los Angeles, Cal., (Q. 6,) where it was con- 
ducted under this name until January, 1002, when 
the firm was incorporated under the name of the 
.1. R. Newberry Company, the appellee in this in- 
terference. 

As to the ground urged by the appellants that 
there is no written evidence of a transfer of the 
right to the trade-mark, it is clear that it is not 
necessary to have a separate instrument in writing 
transferring a trade-mark, for the right to use it 
goes with the business. 
Paul on the Law of Trade-Marks (p. 220) states: 
Where a trade-mark is applied to a commercial article to in- 
dical e it s origin at a particular manufactory or place of produc- 
tion, or its origin or ownership with a particular manufactui er 
or dealer, and not to indicate that such article is produced by the 
peculiar skill of any particular individual, the trade-mark is 
transferable, and will pass with the manufactory or place of pro- 
dm -t ion, or with the business in which it is used, to a successor to 
the original proprietor. Trade-marks of this character consti- 
tute a part of the assets of an individual, firm, or corporation, 
and pass under a sale of the assets and good-will of the business, 
whet her specifically mentioned or not. 

The point made in appellants' brief that the best 
evidence of the several transfers of the business is 
not produced in evidence, with the exception of 
that from the J. R. Newberry Company to the cor- 
poration of J. R. Newberry Company, is not well 
taken. 

The testimony shows that there was merely a 
verbal transfer of the business from Newberry and 
Crombie to Crombie and Crombie. (Newberry, 
RX-Q. - r >; Crombie, Qs. 11, 10.) There is no testi- 
mony that the transfer of the business from Crom- 
bie and Crombie to R. 8. Crombie or that the 
transfer from him to J. R. Newberry and Company 
was in writing. (Crombie, Qs. 20, 27.) The persons 
who were directly involved in these transfers, J. H. 
Newberry and R. C. Crombie, were both called and 
testified to such transfers of the business. The 
fact that the books in which entries were made 
when Newberry and Crombie transferred their 
interests to Crombie and Crombie were not intro- 
duced in evidence cannot make the testimony of 
the parties to the transaction secondary evidence; 
nor can the testimony of the parties as to the 
transfer from Newberry and Company to Crombie 
and Crombie in 1800 be considered secondary evi- 
dence merely because the written inventory upon 
which the sale was based was not introduced in 
evidence. Thequestionto be considered iswhether 
or not the Crouibies succeeded to the business of 
Newberry and Crombie and whether that firm 
was succeeded by R. S. Crombie and in turn suc- 
ceeded l>y .1. R. Newberry and Company. The 
question is not as to the contents of the books or 
what appeared in the written inventory. 

Oreeuleafon Evidence,{vo\. 1, Kith ed., p. 170,) in 
discussing what is the best evidence, states: 

In requiring the production of the besl evidence applicable to 
each particular fact, it is meant that no evidence shall In- re- 
ceived which is merely snhstil ul lonary in ils nature. BO long as 
the original evidence can be had. The rule excludes only thai 
evidence which ilself indicates the existence of more original 
sources of information. Butwhere thereisno substitution of 
evidence, but only a selection of weaker, instead of stronger 

proofs, or an omission to supply all the proofs capable of being 
produced, the rule is not inl ringed. 

It is therefore held that the testimony is not sec- 
ondary, that it clearly shows that the predecessors 



in business of the J . R. Newberry Company started 

in the wholesale and retail grocery business in 1886, 

and that that business under different names was 

continued until appellee's filing date. Whether 

these companies had a legal trade-mark in the 

words "Gold Seal " as applied to coffee which they 

could transmit to their successors in the business 

will be later determined. 

The second ground is that the evidence does not 

exclude the continuous use by R. S. Crombie of 

the trade mark. Crombie testifies: 

Well Isold the entire business to J. R. Newberry and Company 
in the spring of 1890,' as near as I can remember (Q. 27), * * * 
together with the good-will and brands of goods that we handled. 
(X-Q. 4.) 

Tn view of this positive testimony that he had 
parted with all his interest in the business and had 
sold the good-will it would be contrary to the rules 
of evidence to hold that he has continued to use 
this trade-mark in violation of the terms of sale in 
the absence of testimony to that effect. 

The third ground urged is that the evidence does 
not exclude abandonment by one or more of the 
persons or firms whereby the trade-mark may have 
become a proper subject of adoption by O'Dono- 
hue's Sons. In answer to this contention it is 
merely necessary to state that the law never pre- 
sumes abandonment. 

In the case of Saxlehner v. Eisner & Hendelson 

Co. (93 0. G., 940) the Supreme Court of the United 

States, in considering the defense of abandonment 

of a trade-mark, said: 

To establish the defense of abandonment, it is necessary to 
show not only acts indicating a practical abandonment, but an 
actual intent to abaudon. 

Not only is there no testimon3' establishing an 
abandonment of the trade-mark or an intent to 
abandon it, but there is positive testimony to the 
opposite effect. Newberry testifies that the trade- 
mark was used continuously from the time that 
they commenced to use it in 1886 (Q. 14) up to the 
present time. (Q. 35.) Crombie testifies that the 
firms of Newberry and Crombie, Crombie and 
Crombie, and R. S. Crombie, covering a period 
from about 1886 to 1890, used the trade-mark con- 
tinuously. (Q. 23.) Witherspoontestifiesthatfrom 
1890 to 1895 the trade-mark " Gold Seal " was used 
upon coffee sold by the J. R. Newberry Company. 
(Q. 7.) Daley testifies that from 1895 to 1902 the 
firm of J. R. Newberry Company used this trade- 
mark upon coffee. (Q. 30.) 

The fourth ground urged by the appellants is 
that the record does not clearly show that the 
packages of coffee sold by the predecessors iu 
business of the appellee were marked with the 
words "Gold Seal." Upon this point the record is 
not asclearasicmight be. The witnesses all agree 
that from 1002, when the company was incor- 
porated, this trademark was used " on " packages 
containing coffee. As to the use of the mark prior 
to 1902 many of the witnesses testify that it was 
used "in connection with" coffee sold by the for- 
mer company. Of course to entitle the appellee to 
prevail in this interference it is necessary for it to 
establish that this trade mark was used on pack- 







(ffr\ 



ages containing coffee, so as to indicate to the pub- 
lie their origin. 

Some of the witnesses, however, do testify posi- 
tively that the words "Gold Seal" were applied to 
packages sold by the appellee or one of its prede- 
cessors. Newberry testifies that he shipped coffee 
marked and branded with the words " Gold Seal" 
(Q. 23) to the Republic of Mexico (Q. 24) about the 
year 180(1. (Q. 34.) Gallup testifies that prior to 
January, 1002, which is the date upon which the 
corporation was formed, J. R. Newberry and Com- 
pany sold coffee put up in packages upon which 
were the words "Gold Seal." (Q. 20.) Of course 
this does not carry the date back of the appellants' 
registration, but it shows that J. R. Newberry and 
Company used this trademark upon packages, 
though it does not establish that they used it prior 
to the registered mark. 

Daley testifies that since 1895 J. R. Newberry 
and Company used the trade-mark "Gold Seal" 
upon coffee and so advertised it. (Qs. 16 and 17.) 
He further testifies that between 1895 and 1902 
the coffee sold by J. R. Newberry and Company 
was "branded and marked " with the words " Gold 
Seal." (Q. 30.) Witherspoon testifies that coffee 
sold by J. R. Newberry and Company between 
the years 1890 and 1895 (Q. 6) was branded and 
marked with the words "Gold Seal." 

To further substantiate its claims to priority of 
adoption and use, the J. R. Newberry Company 
has introduced in evidence as Exhibit C a certi- 
fied copy of a trade-mark which it filed in the of- 
fice of the Secretary of State of the State of Cali- 
fornia the 3d day of August, 1896. From this ex- 
hibit it appears that the company claimed the 
words "Gold Seal" as a trade-mark to be applied 
on labels and on goods sold by it as wholesale and 
retail grocers. Among other things upon which 
it used this trade-mark is "coffee." 

From a careful consideration of the evidence 
submitted with reference particularly to points 
upon which appellants rely it is found that their 
contention that there must be written evidence of 
the transfer of a trade-mark separate Iroui the 
transfer of the business in which that trade-mark 
is used has no foundation in law; second, that 
their contention that a firm which has parted with 
all its right in a business, including the good-will 
and trade-mark, will have to be shown positively 
to have ceased using that mark upon the same 
class of goods after the sale of the business has 
also no foundation in law; third, that the appel- 
lee must positively establish that it or its prede- 
cessors in business have not abandoned the trade- 
mark has no foundation in law, and in this case 
in fact, for the record discloses that there was no 
such abandonment; fourth, that while all the wit- 
nesses do not positively testify that the trade-mark 
" Gold Seal" was used "on " packages containing 
coffee they all testify that it was used "in con- 
nection with" the sale of coffee, and at least three 
of them testify that packages containing coffee 
were "marked and branded" with the words 
"Gold Seal." 



It is therefore held that the appellee has estab- 
lished by a fair preponderance of evidence that it 
used the trade-mark "Gold Seal" upon packages 
containing coffee prior to July 13, 1897, the date 
of the appellants' registered mark, and the deci- 
sion of the Examiner of Interferences to this effect, 
awarding priority of adoption anduse to the J. R. 
Newberry Company of the trn de-mark in issue, is 
right, and it is affirmed. 





6 





Case No. 57,59^. 



Filed Feb. 1, 1899. 



DECISION . 

Ex £arte Green, MS. D. Vol. 80, Page 365 



"The word 'Victoria' is regarded as belonging to the same 
class a3 'Delta', 'Selma', 'Defiance', 'Aurora' and 'Gibraltar;, 
which have been registered. 

Ex p_arjwa Manogue-Pidgeon Iron Co., 97 O.G., 2084, 
" Huenefeld, 98 O.G., 1968, 
" " Byron Weston Co. 99, O.G., 861, 
" " Aspegren & Co. 110 O.G., 309. 
The words 'New Victoria' are, therefore, registrable as a 
Trade-Mark for sewing machines since the word New does not mate- 
rially affect or change the arbitrary or fanciful significance 
of the word Victoria. 

The decision of the Examiner of Trade-Marks is reversed. 

9m 3. Moore, 

Acting Commissioner, 



A*4*Al,/?6. 






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<o^ 






r 



41 



/n.atf. ^' 



2~. 










COMMISSIONER'S DECISIONS. 



Ex PARTE S. Sternau & COMPANY. 

Decided July 11, 190!,. 
Trade-Mark— The Words "Sterling Nickel" fqu Culinary 
Ware— Descriptive— Not Registrable. 
Held that the words "Sterling Nickel" sho'jld be refused 
registration as a trade-mark for culinary v are made from 
nickel, as the word " Nickel " is descriptive. \>E the goods upon 
which it is used and the word "Sterling" \a descriptive of the 
character or quality of the same. 

ON APPEAL. 

TRADE-MARK FOR METALWARE. ' 

Application filed April 23, 1904, No. 70,718. 

Messrs. Dyer & Dyer for trie applicant. 
Moore, Acting Commissioner: 

This is an appeal from trie action of the Exam- 
iner of Trade-Marks refusing to register the words 
"Sterling Nickel" as a trade-mark for culinary- 
ware made from nickel. 

It is very clear that the word "Nickel" is de- 
scriptive of the goods upon which it is used, and it 
is equally clear that the word "Sterling" is de- 
scriptive of the character or quality of the goods. 
(Ex parte Abingdon Wagon Company, 102 O. Gr., 
230.) 

The fact that the applicant's mark includes some 
arbitrary matter is no justification for including 
in it the descriptive words referred to, which can 
form no part of the real trade-mark. Descriptive 
words should be included as a part of a registered 
mark only where their parts are so interwoven with 
the arbitrary parts of the mark as to become in- 
separable therefrom. 

The decision of the Examiner of Trade-Marks is 
affirmed. 







.OOMMISSIONER'S'DEOISIONSJ 



EX PARTE STRANSKT. 
Decided June 11, Wot. 
^Trade-Mark— The Phrase "The Ware That Wears"— De 
scRTPTrvE— Not Registrable. 
Held that the phrase "The Ware That Wears" is descrip- 
tive in meaning, and therefore not registrable as a trade-mark, 

On petition. 

TRADE-MARK FOR ENAMEL AND STEEL WARE. 

Application filed September 21, 1903, No. 69,122, 

Mr. Francis H. Richards and Mr. Fred W. Bal- 
naclo for the applicant. 
Moore, Acting Commissioner: 

This is an appeal from the refusal of the Exam- 
iner to register the phrase ' ' The Ware That Wears " 
as a trade-mark for enamel and steel ware. 

In the opinion of the Examiner the words " The 
Ware That Wears" are descriptive of a quality of 
the goods to which the words are applied. It is to 
be noted that the appellant defines his goods as 
certain kind of ware— namely, enamel and steel 
ware — and therefore" the use of this word in the 
phrase "The Ware That Wears" is certainly de- 
scriptive. The essential characteristics of a tech- 
nical trade-mark is that the mark shall be arbi- 
trary. It is only upon this theory that the appel- 
lant can have the exclusive right to the trade- 
mark. It is very evident that the phrase "The 
Ware That Wears" is descriptive, in that it con- 
veys the meaning that the ware manufactured by 
the applicant has the quality of endurance, or, in 
other words, that it will wear. Whether the 
phrase means that the enamelware will wear well 
or wear out is entirely immaterial. 

The phrase sought to be registered is one which 
any person dealing in enamel or steel ware would 
have a right to apply to his goods. 

The decision of the Examiner of Trade-Marks is 
affirmed. 










6£> 






llf'.M .t.i>** 



COMMISSIONER'S DECISIONS. 




Ex parte P. P. Mat & Company!/ 

Decided July 11, 1901,. 
Trade-Mark — The Words "Beaver Brand'"— Not Kegis^ 
trable — Descriptive. 
Held that the words ' ' Beaver Brand " are not registrable as 
a trade-mark, as the word ■"Brand" is a descriptive word 
which any dealer has the right to add to his trade-mark. 

On appeal. 

TRADE-MARK FOR CCTLERY AND EDGEtTOOLS. 

Application for registration tied April 13, 1904, 
No. 70,617. 

Mr. Wallace A. Bartlett for the applicants. 
Moore, Acting Commissioner: ** 

This is a petition from the action of the Exam- 
iner of Trade -Marks refusing to register the words 
"Beaver Brand " as a trade-mark for cutlery and 
edge-tools an d requiring that the application be 
limited to goods which are of substantially the 
same descriptive properties. 

The Examiner makes no objection to the word 
"Beaver" as a trade-mark, but requires the can- 
cellation of the word "Brand" from the mark on'' 
the ground thiit it is no part of the trade-mark 
and is common property. The word "Brand" 
added to a mark is undoubtedly understood by the 
' purchasing public as equivalent to a statement 
that the applicant claims the mark as his trade- 
mark. There seems to be no more reason for re-' 
garding this word as a part of the trade-mark itself 
than there would be for so regarding the word 
"Trade-Mark" placed upon a mark. It is a de- 
scriptive word which any dealer has the right to 
add to his trade-mark, and therefore the Examiner 
was right in requiring its cancellation. 

The Examiner's requirement that the applica- 
tion be limited to goods of substantially the same 
descriptive properties, is in accordance with the 
decisions of the Commissioner in the following 
cases: ex parte Faxon, (103 O. G., 891;) ex parte 
Talmage, (104 O. G., 2443;) ex parte Peck Bros. Com- 
pany,(W6 O. G., 704,) and ex parte Camel Company, 
(108 O. G., 2SS.) 

The decision of the Examiner of Trade-Marks is 
affirmed. 



///.$?f.>t£?£ 



COMMISSIONER'S DECISIONS, 




EX PARTE ELMIRA COTTON MILLS COMI 
Decided July 11, 190&. 

Trade-Mark— The Word "Amherst"— Geographical— Not 
Registrable. 
Held that the word " Amherst " is essentially geographical 
in meaning, and therefore not registrable as a trade-mark. 

On appeal. 

trade-mark for cotton and worsted dress goods. 
Application filed February 26, 1904, No. 70,255. 
Messrs. Wiedersheim & Fairbanks for the ap- 
plicant. 

Moore, Acting Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the word 
"Amherst" as a trade-mark for cotton and worst- 
ed dress goods. 

The Examiner states that certain arbitrary mat- 
ter included in the mark presented would be reg- 
istrable, but that the mark as a whole cannot be 
registered so long as it includes as its most promi- 
nent feature the geographical word "Amherst." 

The word "Amherst" is the name of a well- 
known college, and it is believed that its geo- 
graphical meaning would be recognized by all per- 
sons who see the mark. 

It has been held that the words "Bowdoin," 
' ' Yale, " and ' ' Vassar " are not registrable as trade- 
marks, and the reasons upon which those decisions 
were based apply to the present case. {Ex parte 
Peats, 96 O. G., 1649; ex parte Masters & Company, 
109 O. G., 1069; ex parte Weingarten Brothers, 101 
O. G, 3108.) 

The Examiner was right in refusing to register 
the mark including the word "Amherst," and 
therefore his decision is affirmed. 



f 



(&) 



COMMISSIONER'S DECISIONS. 







parte The Davis Sewing Machine Co, 

Decided October 11, 1901,. 
Trade-Marks-" Manhattan "-Geographicai. Word. 

» Manhattan " as a trade-mark for sewing-machines refused 
registration on the ground that it is geographical. 

ON APPEAL. 

TRADE-MARK FOR SEWING-MACHINES. 

Application filed April 2, 1904, No. 70,539. 
Mr. Richard J. MoCarty for the applicant. 

Allen, Commissioner: 

This is an appeal from the decision of the Ex- 
aminer of Trade-Marks refusing to register the 

1 word "Manhattan "as a trade-mark for sewing-ma- 

* chines and attachments. 

It appears that this word is the name of various 
towns and villages in the United States. (Lipp in- 
cotVs Pronouncing Gazetteer of the World.) It is 
the name commonly given to that portion of the 
State of New York upon which is located the ma- 
jor part of the city of New York. The word is 
primarily geographical without any arbitrary or 
fanciful meaning, and under such circumstances 
the Supreme Court of the United States has said: 
* * * merely geographical names cannot be appropriated 
and made the subject of an exclusive property. They do not, 
inand of themselves, indicate anything in the nature of ongm, 
manufacture, or ownership. {Columbia Mill Company v. Al- 
corn, 65 O. G., 1910.) 

The decision of the Examiner of Trade-Marks is 
affirmed. 



- Department, of. State, 

Washington, Octobers, 1904.. 
The Honorable the Secretary of the Rvtorior: 

Sir: Minister Conger forwards from Peking to 
the Department of State, under date of August 15' 
last, a copy of the trade-mark regulations which, 
having received the approval of the Chinese Gov- 
ernment, will be put into force tentatively on Oc" 
tober 23, 1904. 

The regulations were submitted to Mr. Conger 
by the Chinese Government, for suggestions from 
him before their adoption by the Chinese Govern- 
ment, and were forwarded by him to Consul-Gen- 
eral Goodnow at Shanghai, for expressions of opin- 
ion by the American merchants there. In a note 
to the Chinese Government, Mr. Conger informed 
it that the Shanghai merchants found the regula- 
tions burdensome in a number of particulars; and 
he stated that, in his opinion, they were too com- 
plicated in places and imposed too great a tax upon 
the mercantile classes. 

Inasmuch, however, as the Chinese Board of 
Commerce had stated that the regulations were 
provisional only and might be amended at any 
time, Minister Conger informed the Chinese Gov- 
ernment that he would make no objection to their 
being put into operation on October 23, provided 
that the period of exclusive use of a trade-mark be 
made thirty years, as in the United States, instead 
of twenty years,and provided also, that the changes 
suggested by the British Minister and indicated in 
a revised copy of the regulations sent to him by 
the Board of Commerce, be adopted. Minister 
Conger added: 

It must be distinctly understood, however, that this state- 
ment is made upon the condition that, in'addition to the changes 
suggested above, other amendments may be suggested in the 
future, as the experience of American merchants may suggest, 
and that due consideration may be giTen to them. 

Replying to Mr. Conger's note, Prince Ch'itig, 
for the Chinese Government, stated that the Board 
of Commerce had made the changes suggested by 
the British Minister; that the question of exten- 
sion of the trade-mark period would be the sub- 
ject of further consideration, and that if merchants, 
in the future, should desire to have changes, exci- 
sions, or amendments made, their requests would 
receive attention. It was added that the regula- 
tions were experimental and that should any of 
the ministers of other countries have suggestions 
to make, their views would be taken into friendly 
consideration. 

A copy of the regulations, as promulgated, is 
herewith inclosed. 

I have the honor to be, Sir, 

Your obedient servant, 

JOHN HAY, 
Secretary of State. 



REGULATIONS FOR THE REGISTRATION OF TRADE- 
MARKS TO BE OPERATED EXPERIMENTALLY. 

1. Any one, no matter whether Chinese or foreigner, who de- 
sires to have the exclusive use of a trade-mark, must first regis- 
ter the same according to these regulations. 

A distinctive design, inscription, and emblem, either all three 
employed in combination, or any one or two of them, constitute 
the essential characteristics of a trade-mark. 

3. The Board of Commerce will establish a Bureau of Regis- 
tration to attend especially to matters of registration, and the 
Customs at Tientsin and Shanghai will serve as branch offices 
for receiving applications, to the greater convenience of those 
who apply, who may present their petitions at the place nearest 
to them. 

3. Applicants for registration may either send their applica- 
tions direct to the Bureau of Registration or forward them 
through a branch office of application. 



&y 



4. Every application must b"e accompanied by a description in 
■which there shall be inclosed three impressions of the trade- 
mark. The description shall clearly and correctly explain, in a 
general way, the pattern of the trade-mark and tell on what sort 
of goods it is to be used, and to what class they belong accord- 
ing to the classification appended to the subordinate rules an- 
nexed to these experimental regulations. If the application be 
forwarded through a branch office of application, duplicates 
must be made both of the application and the description. 

5. The Bureau of Registration, having received an application, 
and having found nothing in it contrary to the requirements, 
shall file the same for six months, and if within that time no 
person shall have petitioned against the registration, the said 
trade-mark shall be registered. 

6. If applications be made for the registration of trade-marks 
which are similar to one another and which are to be used upon 
the same sort of goods, registration must be granted to the one 
iivst making application. If the several applications be pre- 
sented at the same time on the same d&y, permission to register 
must be given to all. 

7. In case of a trade-mark already registered in a foreign coun- 
try, if application for its registration in China be made within 
tour months from the date of its registration abroad, the date 

_o£ such registration abroad may be recognized. 

S. Trade-marks of the character specified below shall be re / 
fused registration: /^ 

(I.J Those which destroy resoect for rank, do injury to the 
customs of the country, and (are likely to) deceive the people.* 

(II.) Those which imitate the impressions of seals especially 
reserved tor the use of the Government (such as the Imperial 
seal and the oblong lead seals of the various yamens), or which 
imitate the designs of the Imperial flag, the military banners, or 
decorations conferred for merit. 

(III.) A trade-mark identical with one already registered be- 
longing to another person, or, identical with onein public use in 
China more than two years before the present application shall 
have been made, or trade-marks similar to either of the above 
if used upon the same sort of goods. 

(IV.) Those which cannot be recognized by some distinctive 
feature. 

'J. The term during which any" merchant, Chinese or foreigner, 
may be allowed exclusive use of a trade-mark shall be twenty 
years beginning with the date of registration by the Bureau. 
But trade-marks already registered in another country and for 
whoso registration here application shall havo been made ac- 
cording to the regulations shall be allowed a termor, exclusive 
use corresponding to that provided for in the registration 
abroad. (But in no case shall such term extend beyond twenty 
years.) 

10. If after the expiration of the term of exclusive use it should, 
be 'desired to extend such term, and application for a -renewal 
of registration ho made within six months before* the expiration 
of the term of exclusive use, such application for renewal may 
be allowed. 

11. Should the owner of a trade-mark already registered de- 
sire to sell to some one else the right to its exclusive use, or 
should he find it necessary to share its exclusive use with others, 
he must at once make application at the Bureau of Registration 

""Tor registration of the change. 

s 12. If any trade-mark alreadyregistered shall be found to vio- 
late the provisions of (I), (II), and (IV) of Regulation 8, the 
Bureau of Registration may cancel the registration of such 
trade-mark. 

lo. 11 a trade-mark already registered shall be found to vio- 
late the provisions of Regulation ti, or those of till) ofRegulation 
8, the injured party may make application to have the registra- 
tion of such trade-mark annulled. But this provision shall not 
apply to any trade-mark already registered for three years. 

14. If, upon application having been made for the registration 
of a trade-mark, the Bureau of Registration shall find that such 
trade-mark does not comply with the requirements, the Bureau 
shall indorse clearly upon the rejected application the reasons 
for refusing registration. 

15. Any person unwilling to submit to the refusal mentioned 
in the preceding regulation may within six roonths after the 
date of the said refusal present a statemen t of facts and request 
the Bureau of Registration to reconsider the application. 

1G. if in any application for the registration of a trade-mark 
the owner of the trade-mark shall notbe in China, or if he should 
reside at a considerable distance from the Bureau of Registra- 
tion, he must select a reliable friend and report him as his agent 
or representative. ,, 

1?. Should any one desire, to make a copy of any records in 
the trade-mark registration files, or examine the same, he may 
make application for such privilege either at the Bureau of Reg- 
istration or at one of the branch offices. If he shall resic 1 © at a 
considerable distance his agent or representative may make ' 
such application. 

13. The Bureau of Registration shall publish trade-mark re- 
ports, announcing therein for the information of the public what 
trade-marks have been registered and the circumstances con- 
nected with the cancellation of any registration. 

19. Should any one infringe the right to the exclusive use of a 
trade-mark, the owner thereof may bring suit against the of- 
fender, who shall be required to pay damages if investigation 
sustain the charges made. 

20. In case of a suit for the infringement of a trade-mark, pro- 
cedure shall be as follows: (1.) If the defendant be a foreigner, 
the local magistrate shall send a dispatch informing the consul 
of defendant's nationality and shall sit with him in a trial of the 
case. (2.) If the defendant be a Chinese, the consul concerned 
shall send a dispatch informing the local magistrate and shall 
sit with him in a trial of the suit. (3.) If both parties to the 
suit should be foreigners, or if both parties should be Chinese, 
immediately upon information being given of the infringement, 
the court or officer having jurisdiction will take action as re- 
quired, so that due protection may be given. 

21. Any one guilty of any of the following offenses may be 
punished with not more than one year's imprisonment and not 
more than three hundred taels fine, but no action shall be taken 
against any such offender except after suit duly brought by the 
in jured narr.y: 



(I.) Imitation of another's trade-mark with the purpose of 
using such imitation upon the same sort of goods as that on 
which the original is used, or selling such imitation. 

(II.) Making an imitation of another's trade-mark and using 
the same upon the same sort o-f -goods as those upon which the 
original is used, or with a knowledge of the circumstances sell- 
ing such goods or storing them with the in/sntion to sell. 

(III.) Using the imitation of another's trade-mark as a shop 
sign in advertisement or placard. 

(IV.) While knowing that the receptacle used by another 
(such as large or small box, bottle, jar, etc.), or the wrapper 
bears a registered trade-mark, yet using the same for goods of 
the same sort as the originals; or, while knowing the circum- 
stances, selling such goods. 

(V.) Purposely importing such goods into any port, knowing 
well that such action will injure (the sale of) another's goods 
which bear a registered trade-mark. 

22. When on account of the circumstances set forth above 
such counterfeit trade-marks, qv the instruments used in mak- 
ing them are seized and confiscated, the goods, receptacles and 
signs bearing such trade-mark, since it cannot be distinguished 
"rom the genuine, shall all be destroyed. 

23. Fees for application, registration and issue of certificate, 
etc., shall be paid by all persons, whether Chinese or foreign 
merchants, as follows: 

(I.) Application fee, Kuan-p'ing taels 5.00 each mark. 

(II.) Fee for registration and issue of certificate, Kuan-p'ing 
taels 30.00 each mark. ^~ 

(III. ) Registration of transfer of rights, by contract of sale or 
partnership, Kuan-p'ing taels 20.00 each. 

(IV.) Application for extension of expired term and renewal 
of registration, Kuan-p'ing taels 25.ieach. 

(V. ) Copy of fScord of registration of trade-mark, Kuan-p'ing 
taels 2.00. . (For every 100 characters over 100, 5Qtae'17!ents addi- 
tional.) 

(VI.) Examination of records, for each half -hour, Kuan-p'ing 
taels 1.00. 

(VII.) Duplicate lost eertificateJKiian-p'ing taels 10.00 each. 

(VIII.) Filing complaint of infringement, Kuan-p'ing taels 
5.00 each. *"*" 

(IX.) Application for reconsideration of rejected trade-mark, 
Kuan-p'ing taels 5.00 each. 

*~"(X. ) Application for cancellation of registry, Kuan-p'ing taels 
30.00 each. *^ 

(51.) Transfer of certificate to heirs, Kuan-p'ing taels 5.00 
each. 

2-1. These regulations shall be of force from and after Kuan- 
ghsu XXX year, ninth moon, 15th day. (October 23rd, 1935.) 

25. Inasmuch as mutual protection is required by the treaties, 
if, before the Bureau of Registration shall have entered upon 
its duties, request for the registration of any trade-mark shall 
have been presented at any yamen having jurisdiction the Bu- 
reau shall regard the application as having been already prop- 
erly made. 

23. If within six months after the Bureau shall have com- 
menced operations application shall be made for the registra- 
tion of trade-marks which were already registered in another 
country before the Bureau began its work, the Bureau shall 
recognize such trade-marks as entitled to precedence. 

27. Although before the Bureau shall have been established 
various officials may have issued proclamations giving protec- 
tion to various trade-marks, such marks shall not receive the 
benefit of protection unless within six months after the open- 
ing of the Bureau application shall have been made for regis- 
tration according to the provisions of these regulations. 

28. The provisions of the three regulations immediately pre- 
ceding are independent of the requirements of Regulation 5. 

All of the above regulations are to be put into operation ex- 
perimentally. Matters not fully provided for in them may be 
taken into consideration and rules referring to them be added 
after these shall have-gone into effect. 








*For instance such as use official emblems, or employ pic- 
tures which Chinese may regard as improper. 







Ex parte John Mitchell, 




Kecorded Vol.81, page 58 r 
Trade-Mark for Liniment, 



Appeal. 



Application filed May 27, 1904, No. 70,961. 






Mr. H.A. Seymour for applicant 



This is an appeal from the decision of the examiner of trade- 
marks refusing to register the words "Radium Radia" as a trade-mark for 
liniment . 

The examiner is of the opinion that these words when applied 
to liniment are either descriptive or deceptive in meaning. 

The word rad ium is the name of a newly discovered metal, and 
it is well known that many experiments have been made "by physicians and 
scientists to ascertain its curative properties. Whatever the results 
of these experiments may "be, it is generally "believed "by many that the 
metal called radium is effective for thetreatment of some diseases. It 
is quite clear that the words iron, or sulphur, for example, could 
not tie used in trade -marks for liniments, without having a meaning 
which is either descriptive or deceptive. The same considerations, 
in my opinion, justify the refusal of the registration of the word 
ra dium , whether used alone or in connection with the word radia , 
as a trade-mark for the 3ame class of goods. 

The decision of the examiner of trade-marks is affirmed. 

E. B. Moore , 
Acting Commissioner. 
October 22, 1904 . 






LL 



\ 




'to- 


Ex parte Meinecke & Co., 

Trade -Mark, 
Piled Sept. 10, 1904, 
No. 71,630. 




APPEAL. 
Recorded Vol.81, page 103. 


In the case of ex p_arte__ 


St. 


Louis Candy Co., 101 0.0. , 



220, refusing registration of the word "Perfection" as a trade-mark 

for candy, it was said: 

"Any manufacturer is entitled to refer to his candy 
as the perfection of the candy-maker's art, or the perfection 
of candy, and it is believed that the word 'Perfection 1 in 
connection with candy would mean to the ordinary purchaser 
that it is the "best candy which can "be made. It would "be 
understood "by them as describing the style, grade, or 
quality of the candy and is therefore not capable of exclusive 
appropriation as a trade-mark." 

The principles here announced ar ply with equal force to 

the facts in this case. 

The decision of the examiner of trade-marks is affirmed. 

P. I. Allen, 

Commi 3 si oner . 

November 2, 1904. 






lo 




' <. 



&> tf ^"^ 



■OOMMIBSIOHP-U'S DECISIONS, 




Ex parte Colchester. 

Decided November 2, 190',. 

1. Return of Fee— Duplicate Tkade-JIat.e Application— Mis 

take. 

v. here a party a ion of at] de-mark 

oad ) i t;ie same tiling 

ruiidu, ■ isnot entitled 

'aoll he tee iu Hie seooiid utise uu ilia ground of 

S. Sua - PPLICATI02J. 

The i rant the return of the fee in a 

■ a ion is not a mistake in concluding to file 

the apj nc paly a mistake in paying too much or 

when not law, 

Otf REQUEST. 

TEADE-MAEK FOE ARTIFICAL FEETILIZEE. 

Mr. &. G. M. Hardingham for the applicant. 
AI/JjEN, Commissioner: 

This is a request that the fee in the above-enti- 
tled, trade-marls: application be returned to the ap- 
plicant on the ground that it was paid by mistake. 
The application was hied complete on September 
3,1! i ami v-'i duly acted upon by tiie Kxainiuer, 
who made certain formal requii a.nd refused 

registration on the inane ol Charles M. Colchester, 
INo. 36 i cered May 7, 1901. This reierence 

shows substantially tne same mark lor wnich reg- 
istration is sought m tiie present application and 
apxiears to nave Deen granted to the present ap- 
pucant. In tlie request for return ol lue it is stated 
that tne present application was made under mis- 
apprehension, as me member of the hrin wlio gave 
instructions lor tne same was not aware that the 
maili nan already been registered, it is contended 
.i;.i. the application lor return ol fee is baaed upon 
no cuaiigc oi purpose in tnis case, but results ironi 
mtstaiie oi tne cnaracter couicipij ted oy tne stat- 
ute and ru.e authorizi Qg th . i epaj meat of money. 
' tnat tnere was no nir&taice m paying 
the lee in tms case aside from tiie nustaKe made in 

; to hie tne application, lor tne tee paid 
was that requned by law to be paid upon hung 
sucn applications, i tun ox the opinion that tiie 
! ' iJ ,:•-.- as not such 

us contemplate'. I a , :or relund- 

ing money paid by uht>i*dit and trade- 

mark eases, ttuch mistakes, as pointed out in Rule 

yinents in i it required 

or payments not required at all and where the 
payment was made through neglect or misinfor- 
mation on the part of the Office. The mistake in 
the present case is none of these, nor is it similar 
to them, Dut is oi the same hind that is ma 
any caoe where registration or patent is applied 
for which is barred oy tacts not within the actual 
knowledge or eontenpiationoi the applicant v/nen 



making his application. JN o distinction affecting 
tne question oi refunding lees can be based on tne 
fact mat tne bar in tms case is prior registration 
by tne applicant hiniseii and not, as more fre- 
quently nap pens, prior registration by another, 
and it is S'.en settled uy tne decision Of tne Secre- 
tary ol the interior m ex parte Thayer (54 O. (i., 
»67j mat trade -mark ices will norjhe returned 
■when registration litis oeen refused because of 
identity with the previously registered or known 
mams oi others. 

i am aware tnat in the case of ex parte F-Mlay- 
soit, MonsJieCd tie Co. (t>l O. fcr., lo^j Commissioner 
bnnonds turected the repayment of a lee under 
substantially the same Circumstances that are pre- 
sented oy tne present case. The decision in ex 
parte Jf't/nlayson, Jionxjietd ci> Co., however, is not 
beheveuto oe Dased upon a proper interpretation 
of tne law and is hereby overruled.. The follow- 
ing decisions holding tnac ^ees wnl not be returned 
Oy reason of mistakes made in concluding to file 
applications or in the character of the applications 
hied are believed to be sound; ex parte Ayres, 
(51 U. tr., 1944;) ex parte Momerfelt, (73 O. Or., 
1411; exparte Olsen, (101 0. Gh, 3079;) exparte Law- 
son, (101 0. G., 1838;) ex parte Friesi, (103 O. GK. 438.) 

lilt request is denied. 



^J^ 




ex part e A. H. Barter & Company, 
Recorded Vol. 81, P. 221. 

"In the decision of ex parte Faxon (103 0. G., 891), 

Commissioner Allen fully discussed the question of what goods 

could "be included in a single application and it was held that - 

•the scope of a registered trade-mark extends no further 
than the remedy provided for its infringement, and this includes 
only use of the symbol upon merchandise of substantially the same 
descriptive properties.' 

"The question, therefore, to be determined in this case is 
whether or not butter and cheese are goods having 'substantially 
the same descriptive properties.' In ray opinion these two kinds 
of goods are in their characteristics so nearly related as to 
warrant the conclusion that they are goods of substantially the 
same descriptive properties. 

"The decision of the examiner of trade-marks is reversed." 

(Signed) E. B. Moore, 

Assistant Commissioner. 



December 2, 29 04. 



If 



//j.^f./'y/^ 



COMMISSIONER'S DECISIONS,! 




Ex parte Mitchell. 

Decided October 22, 1901,. 
Trade-JIahk— " Radium Radia " for Liniment— Desoriptivk or : 
Deceptive— Not Registrable. 
Held that the word " radium " is either descriptive or de- 
ceptive in meaning when applied to liniments, and therefore 
it is not registrable either alone or in connection with the 
word "radia." 

On appeal. 

trade-mark for LINIMENT. s 

Mr. H. A. Seymour for the applicant. 
Moore, Acting Commissioner: 

This is an appeal from the decision of the Exam- 
iner of Trade-Marks refusing to register the words 
" Radium Radia " as a trade-mark for liniment. 

The Examiner is of the opinion that these words 
when applied to liniment are either descriptive or 
deceptive in meaning. 

The word radium is the name of a newly-dis- 
covered metal, and it is well known that many ex- 
periments have been made by physicians and sci- 
entists to ascertain its curative properties. "What- 
ever the results of these experiments may be, it is 
generally believed by many that the metal called 
radium is effective for the treatment of some dis- 
eases. It is quite clear that the words "iron" or 
"sulfur," for example, could not be used in trade- 
marks for liniments without having a meaning 
which is either descriptive or deceptive. The 
same considerations, in my opinion, justify the 
refusal of the registration of the word radium, 
whether used alone or in connection with the 
word radia, as a trade-mark for the same class of 
goods. 

The decision of the Examiner of Trade-Marks is 
affirmed. 



//J.^f./ffd 



COMMISSIONERS DECISIONS. 




Ex parte P. M. Hoyt Shoe Company. 

Decided December ,', 100U. 
Trade-Marks— Anticipation— "Samsoncalf." 

The word "Samsoncalf" refused registration as a trade- 
mark for shoes in view of a registered mark including a pic- 
ture and the words " Our Little Samson." Confusion would 
result, since both would be known as the "Samson " shoe. 

On appeal. 

TRADE-MARK FOR BOOTS AND SHOES. 

Mr. Charles S. [Gooding and Mr. James L. If orris 
for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Exam- 
iner of Trade-Marks refusing to register the word v 
" Samsoncalf " as a trade-mark on the ground that ■ 
it is so nearly like a prior registered mark as to de- 
ceive customers. 

The prior registered mark is that of Ereedman 

Brothers Shoe Company, No. 39,353, registered 

November 25, 1902, and it is correctly described by 

the Examiner as follows: 

The registered trade-mark consists of a hoop having a repre- 
sentation of a boy therein with outstretched arms and legs, his 
hands and feet engaging the hoop, with the words " Our Little 
Samson " between his legs. The trade-mark is applied to leather 
shoes. 

The word "Samson" in this mark and in the 
applicant's is what may lead to confusion between 
the marks applied to the same class of goods. 
The registered mark has other features; but the 
word "Samson" seems to be the thing in it which 
would be used by purchasers for the purpose- of 
identification when calling for shoes having that 
mark. It is believed that both would be called the 
"Samson" shoe and that confusion would result. 

The Examiner was right in refusing registration, 
and his decision is affirmed. 



^o\ 



//?. ^f /#■?■ 



Ex PARTE SlLOAM SPRINGS WATBR COMPANY. 
Decided November 18, 190U. 

1. Trade-Marks— "Ozark" -Geographical Word. 

The word " Ozark" refused registration as a trade-mark for 
mineral water on the ground that it is geographical. 

2. Same— Geographical Word Without Arbitrary Meaning. 

Where a word has no meaning except its geographical 
meaning, it must he regarded as primarily geographical and 
cannot be registered as a trade-mark. 

On appeal. 

TRADE-MARK FOR MINERAL WATER. 

Messrs. Dudley, Browne & Norton for the appli- 
cant. 
Allen, Commissioner: 

This is an appeal from the decision of the Ex- 
aminer of Trade-Marks refusing to register the 
word " Ozark " as a trade-mark for natural or car- 
bonated mineral water. The word is printed in 
light letters on a diamond-shaped background of 
a contrasting color. 

The Examiner's position is that the word 
" Ozark" should not be registered, as it is a geo-- 
graphical term, being — 

the name of a county in the southwestern part of Missouri, with 
an area of 7SU square miles; that it is the name of the capital 
seat of Dale county, Alabama; that it is the name of the capital 
seat of a county in Arkansas, and of numerous other towns and 
townships in the United States. It is also the name of a chain 
of mountains located in Arkansas, Missouri, and Indian Terri- 
tory. 

The Supreme Court of the United States in Co- 
lumbia Mill Company v. Alcorn (65 O. G., 1916) 
held that geographical words in common use "as 
designating locality, section or region of country" 
are not registrable as trade-marks. 

There are cases in which it has been held that 
where the arbitrary or fanciful meaning of a word 
transcends its geographical meaning the word is 
registrable as a trade-mark, for it is not then pri- 
marily geographical. Such a word is the word 
" Aurora." In ex parte Aspegren and Company 
(100 O. dr., 684) it was said: 

The fanciful meaning of the word "Aurora" has undoubtedly 
led to its adoption as a name of locality in various parts of the 
country, and the fact that it has been so adopted in widely-sep- 
arated places is evidence of the general understanding of this 
fanciful meaning and that this meaning is so pleasing to many 
persons as to suggest to them that the word is suitable as a des- 
ignation of that locality in which they dwell. It is true that by 
this use the word has acquired a geographical significance of 
considerable extent; but it cannot be said that this geographical 
significance has divested it in any degree of its mythological or 
arbitrary meaning. On the contrary, this meaning is under- 
stood by a large part of the persons to whom its geographical 
significance is best known, while by a majority of the people in 
this country it is understood only in its arbitrary sense. 

It is essential, however, that words of this class 
have at least two meanings. In this case it does 
not appear i hat the word ' ' Ozark " has any mean- 
ing other than geographical, and under Columbia 
Mill Company v. Alcorn, supra, it cannot be reg- 
istered as a trade-mark. 

The decision of the Examiner of Trade-Marks is 
affirmed. 




~— 




(COPY) 
Sept. 23, 1904. 

MITEL STATES PATENT OFFICE. 









Ex parte Emma Marie Meckert-Kanne. 



Toilet Articles and Preparations. 



Appeal. 



Application filed May 17, 1904, No. 70,892. 



Messrs. C. A. Snow & Co. for appellant 






This is an appeal from the decision of the examiner of 
Trade-Marks refusing to register as a trade-mark for cologne a 
mark which , is described as follows: 

"My trade-mark consists of the words Johann Maria Farina, 
the final letter of the last name being extended in the form 
of a flourish beneath the name, and the lowermost line of the 
flourish is crossed by two parallel lines forming four angular 

spaces in each of which is a dot . Beiow the words Johann 
Maria Farina is arranged the legend 'gegeniibur dem Jftlichs 
Platz.' The trade-mark as a whole is in script and is inclosed 
by a heajvy border line, within which is a second and lighter 

hordfir lir.p " 






GOMMISSIONEE'S'DECISIONS. 

FbANK & GUTMANN V. MACWILLIAM. J, 

Decided December SO, 1904. "- r 

h TRADE-MARKS— INTERFERENCE— PARTIES. 

Where an interference exists between an applicant for regis- 
i tration and the registrant of a trade-mark and on the records 
of the Office another party appears as the assignee of the regis- 
trant, but said assignee has made no application for registra- 
tion, Held that said assignee should not be made a party with 
the applicant and the registrant in the interference. 
•2. Same— Same— Assignees of Parties. 

Where a party to a trade-mark interference has assigned his 
interest in the trade-mark, Held that the assignees should be 
notified of the declaration of interference and that no good rea- 
son is seen why, under proper conditions, the assignees should 
not be permitted to take charge of the prosecution of the inter- 
ference in place of the assignors. 

3. Same— Assignment. 

Held that the rights under a trade-mark registration may be 
transferred and that it is not necessary for the assignee to re- 
register the mark in his own name to secure those rights. The 
decisions to the contrary (ex parte Bassett, 55 O. G., 997, and ex 
parte Boasted Cereal Company, 57 MS. Dec, 455) overruled. 

4. Same— Same. ~, 

Held that the specific reference in the trade-mark law to the 
transfer of the right leads to the conclusion that the same prac- 
tice in regard to assignments should be followed as to trade- 
marks that is followed in the case of patents. 
Appeal on motion. ., 

TRADE-MARK TOR SUSPENDERS. 

Application of Frank & Gutmann filed December 20, 
1902, No. 67,259. Trade-mark of Hugh G. Macwilliam 
registered May 16, 1899, No. 32,865. 

Messrs. Brown & Seward for Frank & Gutmann. " 

Messrs. Lothrop & Johnson for Macwilliam. 
Allen, Commissioner: 

This is an appeal by Macwilliam from the decision of the \ 
Examiner of Trade-Marks making The C. A. Edgarton " 
Manufacturing Company a party to this interference. . 
It appears that Frank & Gutmann urged before the Ex- 
aminer of Interferences that this interference was irregu- 
larly declared, in that The C. A. Edgarton Manufacturing 
Company was not made a party to the interference, though" 
according to the records of this Office, it appears as the 
assignee of Macwilliam, the registrant. Under the provi- 
sions of Rule 126 the Examiner of Interferences called at- 
tention to this alleged irregularity. The interference was 
then referred to the Examiner of Trade-Marks, who held 
that the instrument recorded in this Office amounted to 
an assignment of Macwilliam's trade-mark to The C. A. 
Edgarton Manufacturing Company. He regarded the Ed- 
garton Company as a real party in interest and made it a 
third party to the interference proceeding. 

On his present appeal Macwilliam objects to the holding 
that the Edgarton Company is the "assignee of the trade" 
mark.*' 

For the purpose of determining whether or not The C. 
A. Edgarton Manufacturing Company should be added as 
a party to this interference it is unnecessary to 'decide 
whether or not it is the legal owner of the trade-mark un- 
der the instrument referred to above. If it is not the 
owner, it surely should not be made a party so long as it. 
has not even made application for registration. If it is 
the owner, it has derived title by assignment from Mac- 
william and could enter the contest only as a substitute 
for Macwilliam so long as it does notjmake separate appli- 
cation for registration in its own name. It must be held, 
therefore, that the Examiner was wrong in making the 
Edgarton Company a third party to the interference. 

It is believed, however, that the Edgarton Company 
should be notified of the declaration of the interference. 
Rule 36 of the trade-mark rules provides that the proce- 
dure in trade-mark interferences — 

will follow, as nearly as practicable, the practice in Intcrferannji 
upon applications for patents. 




T'JZj 



Rule, 103 relating to patent applications, says that notices 
of interferences shall be sent to assignees. Such as- 
signees are not made parties to the interference, but under 
prater conditions and upon proper request are permitted 
to take charge of the prosecution of the interference in 
place of the assignors. No good reason is seen why the 
same procedure should not be followed in trade-mark 

interferences. , . 

There are some decisions by former Commissioners in- 
dicating that a party cannot acquire the right to a trade- 
mark registration by assignment, but only by making ap- 
plication tor registration in his own name. If this were the. 
law, the assignee of the trade-mark could not be recognised 
under any circumstances as having a right to take part in 
the prosecution of the interference involving the registra- 
tion by his assignor. It is not believed, however, that t he. 
law should be so construed. 

In ex parte Bassett (55 O. G., 997) the owner of a trade- 
mark made application for registration and thereafter as- 
signed the mark, and the question was raised whether the 
registration should be made in the name of the Original 
owner or of the assignee. It was there said: 

<3u-h assi-nee may succeed to the rights of the prior owner who 
;,„ "seared" registration by complying with the statute but he 
'-iot bo in my judgment, the direct recipient of the certificate. . 
'. fX° v himself is the same owner who has complied with the rc- 
..lirements of the statute in securing the registration. 

In ex parte Roasted Cereal Company (57 MS. Dec, 455) 
it was held that the certificate of registration could not is- 
sue to Tiie.Catskill Mill Company as assignee and that: 

Tf it i-- the desire of the interested parties that a certificate of 
re-i.it.rr Won issue to The Catskill Mill Company, the said company 
should file an application in its own name and pay the required fee. 

In other words, the rule of the Office has been that to ac- 
quire the rights of a registrant the assignee of a registered 
mark must register it in his own name by making formal 
application therefor and paying a new fee. No decision by 
the courts upon the subject was cited and none has been 
found. The matter is therefore one which is to be deter- 
mined from the general applicable principles of law and the 
speoia) statutes relating to the subject. 

I The act of March 3, 1881, provides that— 
the owners of trade-marks used in commerce with foreign nations 
or with the Indian tribes- 
may register their marks in the Patent Office by comply- 
ing with certain requirements. It is very clear that the 
owner is the one to secure the registration, and this Office 
is to determine "the presumptive lawfulness of claim to 
the alleged trade-mark." (Sec. 3.) Since trade-mark 
jights rest upon principles of common law, the ownership 
may be transferred regardless of registration by a transfer 
of the mark, together with the business in which it is used. 
The registration is founded upon and is evidence of the 
common-law ownership of the mark. (Sec. 7.) 
Section 12 of the act provides: 

That the Commissioner of Patents is authorized to make rules 
and regulations and prescribe forms for the transfer of the right 
to use trade-marks and for recording such transfers in his Office. 

The act of 1881 expressly disclaims any intention to af- 
fect in any way the common-law trade-mark right, (sec. 
10,) and it regulates exclusively the additional rights ac- 
quired by registration. Since it is limited to registered 
marks, section 12, relating to transfers, must be regarded 
as referring to registered marks, including applications for 
registration. It would seem that the provision as to trans- 
fer would not have been inserted in the law unless it affects 
the right acquired under that law by registration. 

It is believed that the provision of section 7 that regis- 
tration shall be "prima facie evidence of ownership" 
menus not merely evidence of ownership in the particular 
person securing the registration, but is also available to his 
successors in business. The trade-mark right is not a per- 
sonal one. but is an incident of the business and is insepa- 










rable from it, It would seem, therefore, that the prima 
fade evidence of ownership should follow the business 
rather than the person. Unless the transfer mentioned in 
section 12 is intended to transfer the rights under the reg- 
istration as well as the common-law right this section 
would seem to be inconsistent with section 7, relating to 
,„,„,«,. jacie evidence of ownership. The transfer under 
section 12 would give ownership to the assignee, while sec- 
tion 7 gives ''prima facie evidence of ownership'' to the 
assignor. It was surely not the purpose of the statute to 
do anything so inconsistent as to give ownership to one 
party and leave the evidence of that ownership in another. 

In ex. parte Bassett, supra, it was said : 

■ * * the fact that Congress made express statutory prow- 

trade-marks. 

I can gather no such intent from the statutes; but, on 
the contrary, the specific reference in the trade-mark law 
to the transfer of the right leads to the conclusion that the 
same practice should be followed as to trade-marks that 
is followed in the case of patents. 

The practice of requiring a new application for registra- 
tion upon each change in the ownership of the business in 
which the mark is used places an unnecessary burden upon 
the owners and accomplishes no useful result. The names 
of business concerns arc continually changed, due to a 
change in ownership in part or in whole, and there seems 
to be no good reason why the trade-mark registration 
should not be capable of transfer along with everything 
else belonging to the firm. 

As a further reason why this Office should not recognize 
and act upon transfers of trade-marks, it was said in ex 

parte Bassett: 

Besides it is conceded that a valid assignment of a, trade-mark 
,■ mivro that the business with which it is connected should pass 
; -, Essiroee and it is obvious that the Patent Office has at its 
Kmmand no satisfactory method of ascertaining W all cases 
whether everything has been done which is necessary in order. to 
■,!= t ; t e So to the mark in the assignee. It could not have : been 
1 he intention of Congress to vest an authority in the Pate ton ee 
which cannot be exercised properly by any means at its disposal. 

If the assignment is regular and contains the proper pro- 
visions, it is undoubtedly evidence of title in the assignee, 
and no good reason is seen why it should not be sufficient 
to give the assignee, a prima facie title. It does not seem 
necessary for the Office, to have absolute proof that the as- 
signee is carrying on the business, for it would have no 
such proof even if the assignee made application for regis- 
tration in its own name. It would merely have the state- 
ment of the assignee. The inability of the Office to inves- 
tigate the matter is therefore no reason for concluding 
that it is not to recognize and act upon the transfers of 
trade-marks. 

I am of the opinion that the rights tinder a trade-mark 
registration may be transferred and that it is not neces- 
sary for the assignee to register the mark in his own name 
in order to secure those rights. The assignee of one party 
to the interference is therefore to be regarded not as an- 
other party with independent claims, since he and his as- 
signor have but the one right or claim relating to the ono 
continuous business. 

The decision of the Examiner of Trade-Marks adding 
The Edgarton Manufacturing Company as a party to (lie 
interference is reversed. 



Janua 



RY I 4 , I905. c5*&.<&UAAf^ 

THE PROPOSED NEW TRADE-MARK IAW. 

BT ARTHUR ?. GREELEY, LATE ASSISTANT COMMISSIONER OF PATENTS. 

Registration of trade marks under the present trade- 
mark law of the United States is of no practical value 
to American owners of trade marks. The law requires 
a registration fee far in excess of that required in 
any European country, and the certificate of registra- 
tion adds nothing to the protection enjoyed by owners 
of trade marks under the common law doctrine of "un- 
fair competition" without registration. Registration 
under the present law is of importance only as a pre- 
requisite to registration in foreign countries, and even 
in this respect the law falls far short of its intended 
purpose. 

The law, instead of providing that all marks which 
would be held by the courts are entitled to protec- 
tion under the common law, makes the Commissioner 
of Patents the sole judge of what shall be registered as 
a trade mark, without appeal from his decision and 
without the possibility of mandamus to compel him to 
register a mark even though it were held by the 
courts to be a valid trade mark. A section of the law 
evidently intended to permit the registration of 
marks for the purpose of enabling their owners to reg- 
ister them abroad' and so protect them, is so obscurely 
worded that it is without effect. With the increase of 
our foreign trade in manufactured articles and the 
consequent increase in importance of the protection 
abroad of the trade marks of our manufacturers and 
exporters, the rulings of the Patent Office, instead of 
growing more liberal in the matter of registration, 
have grown more and more technical and arbitrary, 
until it has become impossible for either an American 
or a foreign owner of a trade mark to secure its regis- 
tration in the form in which it is used even if regis- 
tration can be secured at all. As a result, foreign 
owners of trade marks have been deprived of rights to 
which they were entitled under the provisions of 
treaties and conventions solemnly entered into by the 
United States, and American owners of trade marks, 
instead of being aided in their efforts to secure protec- 
tion for their trade marks abroad, have been hampered 
and hindered and even absolutely prevented from se- 
curing such protection and compelled to see their 
trade marks counterfeited in the foreign markets and 
their trade destroyed without the possibility of re- 
dress. It is no uncommon thing for American manu- 
facturers to find that the trade marks which they 
have made valuable as the distinctive marks of their 
goods have been not only copied and used by foreign 
competitors, but have even been registered abroad and 
thus become the property of such competitors, the 
possibility of this usurpation of their trade marks 
being, it is true, due oftentimes to their own neglect, 
though largely due to the impossibility of securing 
registration under the present law as construed by the 
Patent Office, and the consequent impossibility of se- 
curing registration abroad. 

The rapid development of our foreign trade in man- 
ufactures has awakened American manufacturers to 
the importance of securing relief from the defects of 
the present trade-mark law. The matter of the re- 
vision of the trade-mark law has been before Congress 
for many years and it is gratifying to everyone inter- 
ested in the growth of our foreign trade that at last 
there is an excellent prospect that the relief so long 
sought will not be long delayed. The Committee on 
Patents of the House of Representatives, on December 
19, 1904, reported, with a recommendation that it pass, 
a bill introduced by Mr. Bonynge of that committee 
(H. R. 16,560), which is calculated to make a radical 
change in the present practice of the Patent Office 
in the matter of the registration of trade marks and 
to give, as stated in the Committee's report, "the 
_ielief which the owners and users of trade marks are 
\_ustly asking at the hands of Congress." j 



As stated by the Committee on Patents, the main ob- 
jects sought to be accomplished by the bill are: "First, 
to make provision for the registration of trade marks 
used in interstate commerce, as well as those used in 
foreign commerce and in commerce with the Indian 
tribes; second, to provide a procedure which will give 
uniformity to the laws governing the registration of 
trade marks; third, to provide additional penalties 
for the infringement of a registered trade mark; 
fourth, to reduce the fee required on filing an applica- 
tion for the registration of a trade mark; fifth, to 
regulate the procedure for the registration of a trade 
mark governing cases of interfering or conflicting 
claims to the use of trade marks; sixth, to make our 
statutes conform to treaty stipulations entered into 
between the United States and certain other govern- 
ments." 

Stated more in detail, the bill provides for the 
following advantages to owners of trade marks not 
enjoyed under the present trade-mark law: 

The registration fee is reduced from $25 to $10. 

Marks used in interstate commerce are registrable, 
thus permitting the owner of a trade mark to secure 
registration here before using his mark in foreign 
trade, and, having secured registration here, to pro- 
tect the mark by registration abroad, before actually 
sending his goods bearing the mark to the foreign 
markets. This will prove to be of very great advan- 
tage to our exporting manufacturers. 

All marks which could under the common law be 
regarded as trade marks are registrable and cannot be 
refused registration because of including what may be 
considered non-essential matter. This is of very great 
importance in permitting trade marks to be registered 
in the precise form. in which they are used instead of 
in the mutilated form in which they are now permit- 
ted to be registered. 

All marks which have been in actual use for the 
past ten years are registrable, thus providing for 
the protection of marks which even if not strictly 
trade marks at the date of their adoption, have, by 
long-continued use, become the recognized distinctive 
marks of the goods of those who have used them. 

The final decision as to whether or not a mark 
is registrable no longer is to rest with the Commis- 
sioner of Patents, but with the Court of Appeals of 
the District of Columbia, thus insuring stability of the 
practice. 

The registration of trade marks by any other than 
the real owner is carefully guarded against by pro- 
viding for the publication of the applications in ad- 
vance of actual registration, so that the real owner 
may have an opportunity to oppose the registration. 



S& 



This bill has been ably drawn after a full consider- 
ation of the defects of the present law, the limitations 
on the power of Congress under the Constitution, and 
the necessities and rights of the owners and users of 
trade marks. The bill is based on the clause of the 
Constitution which gives to Congress the power to 
regulate commerce "with foreign nations and among 
the several States" and is within the lines of the rec- 
ommendation made by Thomas Jefferson to the Second 
Congress respecting the protection of what are now 
known as trade marks. The bill is also within the 
lines of the recommendations made by the Commis- 
sion to revise the patent and trade-mark laws, ap- 
pointed under the act of June 4, 1898, and embodies 
many of the provisions of the proposed trade-mark 
bill recommended by me as a member of that Com- 
mission, as well as some of the provisions of the bill 
recommended by the other members of the Commis- 
sion. The bill in its present form has the approval 
and support of the American Bar Association, the 
National Association of Manufacturers, the Patent 
Law Association of Washington, the New York Bar 
Association, and, when its provisions are understood, 
will receive the support, it is believed, of manufactur- 
ers and users of trade marks throuehout the country. 



// 









Foreign owners of trade marks are permitted to reg- 
ister their marks on showing that they are in fact 
the owners by reason of having registered the marks 
in their own countries, and without requiring them 
to show use of their marks in commerce with or with- 
in the United States, thus giving effect to treaty 
agreements. 

By reason of these provisions, it will he possible 
to place on the register practically all trade marks 
in use in the United States, as very few trade marks 
are used wholly within any State. 

The provisions for the protection of registered trade 
marks are such as to make registration of great 
importance aside from the question of their use in 
foreign trade. Under the provisions of the bill the 
owner of a registered mark has a right of action 
in the United States courts against anyone who uses 
an infringement of it in interstate commerce or in 
foreign commerce, thus reaching, through the United 
States courts, all infringers except those who use the 
infringement in merely local trade. If the infringe- 
ment is proved, not only may the actual damages be 
recovered as at common law, but three times the actual 
damages may be recovered, if, in the opinion of the 
court, the circumstances warrant such recovery. This 
will probably prove of material importance in cases 
of willful and persistent infringements. The bill also 
provides that in case infringement is proved the owner 
of the registered mark may compel the infringer to 
deliver up all labels and receptacles bearing the in- 
fringing mark. Another important provision is 
that in case an owner of a registered trade mark se- 
cures an injunction against an infringer in one cir- 
cuit, he can enforce the injunction anywhere in the 
United States without the necessity of bringing a sep- 
arate suit in every circuit into which the infringer 
may shift his business. 

Other features of the bill provide for giving to for- 
eign trade-mark owners all of the rights enjoyed by 
domestic trade-mark owners, thus giving effect to treaty 
agreements. 

The provision for opposition and cancelation of 
trade marks protect the rightful owners of trade 
marks against the registration of their marks by oth- 
ers so that the bill, when it becomes a law, will 
neither permit protection to he refused to the rightful 
owners of trade marks nor permit any advantage to be 
gained by anyone not actually the owner. There is 

nothing in the bill which interferes with the common 
law rights of owners of trade marks and the passage 
of the bill cannot be detrimental to any rights of the 
public or of owners of trade marks, but, on the con- 
trary, will be of great and lasting benefit, not only to 
the foreign trade of the United States, hut also to 
•domestic trade. No effort should he spared to secure 
the early passage of the bill. 



^ 






Nov. 23, 1904 




United States Patent Office. 
Ex, parte Prank A. Chapa . 
Trade-Mark for Medical Compounds 
Petition. 



Application filed March 28, 1904, No. 70,489. 
Messrs. C. A. Snow & Company for applicant. 

This is an appeal from the decision of the examiner of 
trade-marks refusing to register a mark for medicines which is 
described as the "Virgen of Guadalupe." 

The mark, however, is not simply an emblem of religion 
hut has arbitrary accessories which make it a proper trade-mark. 
It is not believed that its use as a trade -nark would be regarded 
as debasing or bringing obloquy upon an emblem of religion nor 
that it would shock the sensibilities of those professing any 
religious belief and therefore public policy does not demand 
that the mark be refused registration. 

The decision of the examiner of trade-marks is reversed 



(Signed) P. I. Allen, 

Commissioner 



January 7 , 1905 . 






COMMISSIONER'S DECISIONS, 




fij 117" Ex parte C. M. Taylok & Co. 4 
Decided January 7, 10QS, 

1. Trade-Marks—" Purity ''—Peanuts. 

The word "Purity" refused registration for peanuts, as it be- 
longs to a class of words which arc descriptive or advertising in 
character and arc not registrable as trade-marks. 

2. Same— Same— Suggestive Meaning. 

Such a word as "Purity " applied to shelled or unshellcd pea- 
nuts would be understood as indicating that the peanuts were 
free from dirt and adulteration, and it is therefore descriptive of 
the quality of the goods and as such is not regis!,™ Mf»5» trade 

mark, a.visii 

On appeal. V™ v<*~*r**wsm*r»m 

TRADE-MARK FOR PEANUTS. 1 " ■"}' 

Application filed September 19, 1904, No. 71,689. 1 ; 
Mr. Addison E. Mullilcin for the appellants, i 

Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register the word "Purity" as a 
trade-mark for peanuts. 

In his decision he states: 

This won! would appear to be similar to the word "Perfection " 
refused registration in ex parte St. Louis Candy Co. (101 O. G., 
220); the word "Sterling" refused registration in ex -parte The 
Abingdon Wagon Co. (102 0. G., 229). 

In the Century Dictionary the word "Purity" is defined as 
•'The condition or quality of being pure." And, further, as 
"Cleanness; freedom from foulness or dirt." As applied to pea- 
nuts it, manifestly, indicates a quality of the peanuts, indicating 
that they are of pure quality, clean, free from foulness or dirt. 

The same word "Purity" was refused registration for. 
pleomargarin in ex. parte The Capital City Dairy Co., (83' 
O. G., 295,) Commissioner Duell saying: 

The Examiner very properly rejected the application for regis- 
try, stating that the word belongs to a class of words which are 
des'-riptire or advertising in eha-ra<?to?. -V/bilr the word " Purity" 
is not an adjective in form and may not be commonly employed to 
describe a quality, nevertheless it cannot be successfully denied 
that it has a suggestive meaning. If the word is used in a fanciful 
sense, as contended by applicant's counsel, then it certainly has a 
tendency to deceive the. ordinary buyer. Nine housewives out of 
/ ten, on seeing an article of food marked " Purity" would conclude 
that the word was used to indicate a quality claimed to be pos- 
sessed by the article. 

It is contended by the appellants that oleomargarin is 
capable of adulteration and that, therefore, the word " Pu- 
rity" would be be descriptive of the quality of goods in that 
case, but would not be descriptive of peanuts, which, they 
contend, cannot be adulterated. In this connection it is.to 
be noted, however, that the class of goods upon which " we 
use said trade-mark is peanuts" would include shelled pea- 
nuts, which might be adulterated. Certainly it would be 
understood by the use of this trade-mark that both the 
shelled and unshelled peanuts were not mixed with dirt or 
foreign matter. The word "Purity," then, becomes in the 
fullest sense descriptive of the quality of the goods and as 
such is not registrable as a trade-mark. ji . r 

The decision of the Examiner of Trade-Marks is right, 
and it is affirmed. 



I 






7 




Oct. 14, 1904. 
Intf. 23,991. 



United States Patent Office. 
The Gem Cutlery Co. v. Leach. 
Trade-Mark for Razors. 



Dec. 2, 1904. 



Appeal from Examiner of Interferences, 



Application of The Gem Cutlery Co. filed April 29, 1904, No. 70,750. 
Trade-Mark of Henry 3. Leach registered June 12, 1888, No. 15,591. 



Messrs. Miller, Starr & Cruse and Mr. Lawrence A. Janney for The 

Gem Cutlery Co . 
Mr. James J. S/ieehy for Leach. 



This is an appeal by The Gem Cutlery Co., first, from the 
decision of the examiner of interferences refusing to grant its 
motion requiring the parties to file preliminary statements, and, 
second, from his refusal to enter judgment upon the record. 

The appellant calls attention to the fact that Rule 36 of 

the rules relating to the registration of trade-marks sets forth 

that : 

" x x x proceedings on such interference will follow, as 
nearly as practicable, the practice in interferences upon 
applications for patents." 

In interferences between applications for patents the 
parties are required by the rules to file preliminary statements 
and it is the appellant's contention on this appeal that this 
practice should apply to interferences in trade-mark cases. 

The different allegations required by the rules to be made 
by an applicant for patent, if proved by the testimony, all tend 
to establish but one thing - the date on which the applicant in- 
vented the subject-matter in controversy. The equivalent in 




<5>&. 



-J 2 - 

trade-mark cases, of the date of invention in patent cases, is 
the date of adoption and use of the trade-mark in issue. The 
statutes relating to patents do not require the applicant to al- 
lege in his application the date on which he made the invention. 

On the other hand, section 1 of the Act of March 3, 1881, 
relating to trade-marks specifically require the applicant for 
registration to make "a statement of the mode in which the same 
is applied and affixed to the goods and the length of time dur- 
ing which the trade-mark has "been used." In the present case 
"both parties have complied with this requirement of the statute, 
Leach stating in his application for registration that "this trade- 
mark has "been used continuously in business by me since April 1886." 
It therefore appears that April, 1886, is the date of his claimed 
adoption and use. This date is the equivalent, as previously 
noted, in patent cases of the date of the complete act of inven- 
tion. It therefore appears that the trade-mark act referred to 
requires the applicant to file in effect a preliminary statement 
with his application, whereas under the patent laws this is not 
required and an applicant for patent need not disclose any date 
unless he "becomes a party to an interference and takes advantage 
of the rule permitting the filing of preliminary statements. 

With this date of April, 1886, set forth by Leach as the 
date of adoption and use of his trade-mark in issue, it is not 
seen how The Gem Cutlery Co. can contend that after it has dis- 
closed its entire case in taking its testimony, Leach can then 
present his testimony "untrammeled and uncommitted as to his own 



- 3 



position until he has "been fully acquainted with that of The Gem 
Cutlery Co." It is true that it has teen held that a registrant 
is not prevented from establishing an earlier date than that al- 
leged in his application for registration as the date of his 
adoption and use. Sherwood v. Horton, Cato & Co., 84 0. G., 
2018; CD., 1898, 629. But it is also true that: 

" x x x it is to be presumed that this statement filed 
with the application for registration was made after proper 
inquiry, and while it is not binding upon the parties to an 
interference proceeding it is still entitled to considerable 
weight." Auerbach & Sons v. Hall & Hayward Co., Ill O.G.,806, 

Even though it were the practice to require preliminary 
statements in trade~mark cases, by the same analogy as the prac- 
tice in interferences upon applications for patents, they would 
be subject to amendment upon a satisfactory showing. For simi- 
lar reasons the testimony which will entitle a registrant to rely 
upon a date prior to that given in his application in compliance 
with the express requirement of the statute should be clear and 
convincing. 

For the reasons mentioned it is held that the Act of 
March 3, 1881, requiring the applicant to give in his application 
the date of adoption and use of the trade-mark makes the applica- 
tion of the rules relating to preliminary statements in interfer- 
ences on patent matters unnecessary in interferences upon trade- 
marks, for, as previously noted, a preliminary statement in trade- 
mark cases is in effect filed with every application for regis- 
tration. 



- 4 - 



The motion of The Gem Cutlery Company that judgment on the 
record "be entered against Leach is "based upon certain copies of 
assignments said to "be recorded in this office and in which Leach 
is said to have transferred his rights under the trade-mark in is- 
sue to certain other parties. It is therefore contended that the 
records of the office show that Leach has "by his own act "distinct- 
ly and unmistakably divested himself of the ownership" of the trade- 
mark in issue. It is therefore contended that the records of the 
office show that he is not the present owner and judgment should 
immediately, for this reason, "be entered against him. 

Section 7 of the act previously referred to states "that 
registration of a trade-mark shall be prim a facie evidence of 
ownership." Leach, therefore, by his registration has a prima 
facie ownership of the trade-mark in issue. The Gem Cutlery 
Company in its application for registration contests this right. 
Registration can not be granted to The Gem Cutlery Co., except 
upon the conclusion that it is the owner of the mark and to reach 
this conclusion it is necessary to overcome the presumption in 
favor of Leach. The fact, if true, that Leach transferred his 
rights to a successor in business would not establish ownership 
\>y The Gem Cutlery Co. The trade-mark right which was presump- 
tively in Leach would not be extinguished by a transfer, but 
would continue in his successors. It would seem that the claimed 
right of The Gem Cutlery Co. to registration could be established 
only ^oy showing that it adopted and used the mark before Leach or 
that the mark was abandoned by Leach or those deriving title from 



- 5 - 



him before The Gem Cutlery Co. adopted it. Whether the decision 
ultimately turns upon the question of priority of adoption or upon 
the question of abandonment, the parties should be permitted to 
take testimony and show the facts. 

There seems to be no reason for disturbing the examiner's 
ruling that judgment should not be entered on the record in favor 
of The Gem Cutlery Co. In fact it would seem that his decision 
denying a motion for judgment on the record should not be subject 
to review on appeal in any case. It is not a final decision that 
judgment will not be rendered in favor of the p&rty bringing the 
motion or against the other side, but is merely a ruling that 
judgment will not be entered now on the record evidence now in 
the case. The Gem Cutlery Co. will have the right of appeal if 
judgment is finally rendered against it and on such appeal it may 
obtain a review of the question whether the record entitles it to 
judgment. The time to pass upon the merits of that question by 
appeal is after judgment has been rendered in favor of one party 
or the other. By such postponement the parties are not deprived 
of the right to have the matter reviewed and irregularity and con- 
fusion in the proceedings are avoided. 

The decision of the examiner of interferences refusing to 
require the parties to file preliminary statements is affirmed. 

The appeal in so far as it relates to judgment on the rec- 
ord is dismissed. 

(Signed) F. I. Allen, 

Commissioner. 

December 2, 1904. 



#^ 



2 B 



For the reasons mentioned it is held that the act of 
March 3, 1881,, requiring the , applicant to give in his ap- 
plication the date of adoption and use of the trade-mark; 
makes the. application of the rules relating to preliminary 
Stat emepjts .in interferences on . patent matters unneces- 
Bary.in interferences upon trade-mark^, fof^as previously., 
noted, a preliminary statement in trade-mark cases is, in 
effect, filed with every application for registration. 

The motion of the Gem Cutlery Company that judg- 
ment on the record be entered against Leach is based upon 
certain copies of assignments said to be recorded in this 
Office and in which Leach is said to have transferred his 
rights under the trade-mark in issue to certain other par- 
ties. It is therefore contended that the records of the 
Office show that Leach has by his own act " distinctly and 
unmistakably divested himself of the ownership " of the 
trade-mark in issue. It is therefore contended that the 
records of the Office show that he is not the present owner, 
and judgment should immediately) for this reason, be en- 
tered against him. 

Section 7 of the act previously referred to states — 

that registration of a trade-mark shall be prima facie evidence of . 
ownership. 

Leach, therefore, by his registration has a prima facie 
6wnership of the trade-mark in issue. The Gem Cutlery 
Company in its application for registration contests 
this right. Registration cannot be granted to the Gem 
Cutlery Co. except upon the conclusion that it is the 
owner of the mark, and to reach this conclusion it is nec- 
essary to overcome the presumption in favor of Leach. 
The fact, if true, that Leach transferred his rights to a suc- 
cessor in business would not establish ownership by the 
Gem Cutlery Co. The trade-mark right which was pre- 
sumptively in Leach would not be extinguished by a trans- 
fer, but would continue in his successor. It would seem v 
that the claimed right of The Gem Cutlery Co. to regis- 
tration could be established only by showing that it 
adopted and used the mark before Leaeh or that the mark 
Va^ab'aridoried by Leach or those deriving title from him v 
before the Gem Cutlery Co. adopted it. Whether the de- 
6ision ultimately turns upon the question of priority of 
adoption or upon the question of abandonment the par-" 
ties should be permitted to take testimony arid show the-' 
facts. 

There seems to be no reason for disturbing the Exam- 
iner's ruling that judgment should not be entered on the 
record in favor of the The Gem Cutlery Co. In fact, it 
would seem that his decision denying a motion for judg- 
ment on the record should not be subject to review on 
appeal in any case. It is not a final decision that judg- 
ment will not be rendered in favor of the party bringing 
the motion or against the other side, but is merely a ruling 
that judgment will not be entered now on the record evi- 
dence now in the case. The Gem Cutlery Co. will have 
the right of appeal if judgment is finally rendered against 
it, and on such appeal it may obtain a review of the 
question whether the record entitles it to judgment. The 
time to pass upon the merits of that question by appeal 
is after judgment has been rendered in favor of one party 
or the other. By such postponement the parties are not 
deprived of the right to have the matter reviewed, and 
irregularity and confusion in the proceedings are avoided. 

The decision of the Examiner of Interferences refusing to 
require the parties to file preliminary statements is af- 
firmed. 

The appeal in so far as it relates to judgment on the rec- 
ord is dismissed. 



IB 

COMMISSIONER'S DECISIONS. 




*-■*>-> — The Gem Cutlery Co. v. Leach. 

Decided_Becember 2, 1904- 
1. Teade-Maek Inteefeeence- Preliminary; Statements- 
Statement in Application. 
In trade-mark interferences the statements in the applica- 
tions as to the dates of adoption and use correspond to Prelimi- 
nary statements in patent interferences, and therefore no addi- 
tional preliminary statements are required. _,'„, 

2 Same-Same-Same-Proof of Earlier Date. " H 

A trade-mark applicant or registrant is not prevented from 
proving an earlier date of adoption and use than that alleged in 
. his statement filed.with Ms application; but to avail him such 
proof must be clear and convincing. 

3 Same— Motion foe Judgment on Record— No Appeal ''" ' 

Where motion for judgment on the record is denied by the Ex- 
aminer of Interferences, Held that there is no appeal. The ques- 
tion presented by such motion may be reviewed on appeal from 
the final judgment when one is entered, but not from a refusal to 
enter judgment. 

4. same— Same— Assignment of Mark. 

"Where one party to a trade-mark interference moved for judg- 
ment on the ground that the opposing party had assigned his 
trade-mark and was no longer the owner, Held that the motion 
"was properly denied. 

5. Same— Same— Same. 

The assignment of a trade-mark does not extinguish the right, 
but it continues in the assignee, who is the successor in business 
and therefore such assignment does not entitle the opposing 
party in the interference to judgment as the real owner of the 
mark. 
Appeal from Examiner of Interferences. 

trade-mark-foe razors. : -S 

Application of The Gem Cutlery Co. Trade-mark of 
Henry B. Leach. 

Messrs. Miller, Starr & Cruse and Mr. Lawrence A. Jan- 
neyior The Gem Cutlery Co . ass 

Mr. James J. Sheehy for Leach. j : 
Allen, Commissioner: 

This is an appeal fry The GefflCutlory Co., first, from the 
decision of the Examiner of Interferences refusing to gran! 
its motion requiring the parties to file preliminary state- 
ments, and second, from his refusal to enter judgment upon 
the record. 

The appellant calls attention to the fact that Rule 36 of 
the rules relating to the registration of trade-marks sets 

forth that — 

* * * proceedings on such interference will follow, as nearly 

as practicable, the practice in interferences upon applications for 

patents. 

In interferences between applications for patents the 
parties are required by the rules to file preliminary state- 
ments", and it is the, appellant's contention on this appeal 
that i lift pva'.-tlce should apply to interferences in trade- 
mark cases. 

The different allegations required by the rules to be 
made by an applicant for patent, if proved by the testi- 
mony, all tend to establish but one thing — the date on 
which the applicant invented the subject-matter in con- 
troversy. The equivalent in trade-mark cases of the date 
of invention in patent cases is the date of adoption and use 
of the trade-mark in issue. The statutes relating to pat- 
ents do not require the applicant to allege in his applica- 
tion the date on which he made the invent ion. 

On the other hand, section 1 of the act of March 3, 1881, 
relating to trade-marks, specifically requires the applicant 
for registration to make — 

a statement of the mode in which thesame is aPPH<£an<J affixed td 
the goods and the length of time during which the tiadc-mark lias 
been used. . 









In the present ease both parties have hmp '«' »"' . 
^ISofinest a tut;,I^8tatingm^*»Utod 

:L S i,nU;.,n that •■tins t ra de-n r K ;; l>- use ,,- 
tinuously in business by me sn.ee April, 1888. Hrt*< 
IT ppears that April, 1886, is the date o Ins churned 
adoption and use. Tins date is the equivalent, as p. - 
•ously noted, in patent eases of the date of A. «££ 
aet of invention. It therefore appears that the trade- 
Lark act referred to requires the applicant to file, in eficct, 
a preliminary statement with his application; whereas un- 
der the patent laws this is not required and an applicant 
for patent need not disclose any date unless he becomes a 
party to an interference and takes advantage of the rule 
permitting the Ming of preliminary statements. 

With this date of April, 1SS6, set forth by Leach as the 
date of adoption and use of his trade-mark in issue it is- 
not seen how The Gem Cutlery Co. can contend that after 
it has disclosed its entire case in taking its testimony 
Leach can then present Iris testimony ^f — " 
uncommitted as to his own position until he has been fully 
acquainted with that of The Gem Cutlery Co." It is true 
tl a it has been held that a registrant is not prevented 
from establishing an earlier date than that alleged m Ins 
application for registration as the date of Ins adoption and 
use, {Shencood v. Hortm, Cato <& Co., 84 0. G, 2018, 
C T> 1898 629:) but it is also true that— 

plication rorrcBistmtion was made alt c. p. opei mqt ^^ , 

$Bayu>ardCo.,mO. G.,806.) 

Even, though it were the practice to require preliminary 
statements in trade-mark cases, by the same analogy as 
the practicein interferences upon applications for patents, 
they would be subject to amendment upon a satisfactory 
showing For similar reasons the testimony which will 
entitle! registrant to rely upon a date, prior to thatgiven 
in his application in compliance with the express require- 
ment of the statute should be clear and convincing. __ 







0.'f*& . 



/ / 



4< 




2- 




<p 



*o 



COPY. 



gspartmetxt erf ific %ntexiax, 

Suited states patent GDffice, 

'SSIasMngtcra, <B. ©. 



M. H. 



February 18, 1905. 



The Honorable 



The Secretary of the Interior 



Sir: 



I have received "by your reference of the 17th instant 
the bill H. R. 16560, entitled "An Act to authorize the registra- 
tion of Trade-Marks used in commerce with foreign nations or 
among the several States or with Indian tribes, and to protect 
the same." This measure, having passed both Houses of Congress, 
now awaits approval by the President. Reference is made for an 
expression of my views "as to the constitutionality of this bill, 
and also whether the administrative features of the same are sat- 
isfactory ." 

As to the constitutional question, I have the honor to 
report that this question as presented by this bill and as con- 
sidered by the Committees of the Senate and House of Representa- 
tives is the question whether Congress has constitutional power 
to regulate the use of trade-marks, the query being directed to 
the question whether trade-marks bear such relation to commerce 
as to bring them within Congressional control, under the provis- 



r ^'-' 



ions of Clause 3, section 8, Article 1, of the Constitution of 
the United States, which provides that Congress shall have power 
to regulate commerce with foreign nations and among the several 
States and with Indian tribes. 

In respect to this question, I believe the authorities 
quoted in the reports of the Committees of the Senate and House 
of Representatives warrant the conclusion reached by these commit- 
tees that Congress has authority to legislate with regard to this 
matter, trade-marks being, in my opinion, instruments of commerce 
and proper subjects of regulation in connection with the regula- 
tion of the commerce in which they are employed. The bill under 
consideration is limited to the commerce referred to in the sec- 
tion of the Coins f .i tut ion above quoted, and within this field I 
believe Congress has the right to legislate. 

This question appears to have been raised by a sentence 

in the opinion of Mr. Justice Miller in the Trade-Mark Cases, 100 

U. S., 82, as follows: 

"The question therefore whether the trade-mark bears 
such a relation to commerce in general terms as to bring it 
within Congressional control, when used or applied to the 
classes which fall within that control, is one which in the 
present case we propose to leave undecided." 

The case in which this language was used was determined 
by the fact that the legislation under consideration in that case 



p> 



was not limited to the commerce of the constitutional section 

above referred to, and it was concluded that the Supreme Court 

could not introduce words of limitation "by construction to make 

it valid. The statute was therefore declared unconstitutional. 

It was for this reason that it was unnecessary for the Supreme 

Court to say whether another statute free from the difficulties 

then under consideration would he able to be supported. Mr. 

Justice Miller says in the same opinion: 

"In such cases it is manifestly the dictate of wisdom 
and judicial propriety to decide no more than is necessary 
to the case in hand." 

I do not think this statement of Mr. Justice Miller 
should be considered as intended to express a doubt as to the 
validity of a properly limited statute like the present measure. 

Upon the question whether the administrative features 
of this bill are satisfactory, I have the honor to report that 
they are. In connection with the administration of this proposed 
law, it seems necessary to state that it will entail upon this 
bureau a considerable increase in work, and that the estimate of 
additional force required by this office, and now pending before 
the House of Representatives, to carry into effect its provisions, 
should receive prompt and forceful attention, as without such in- 
creased force it would be difficult to meet the increased burden 




*! 




of work which this new law will entail. 

Having called attention to our necessities in this re- 
gard, I would say that I helieve that this measure should receive 
executive approval. 

The papers received by your reference are returned here- 
wi th . 

Very respectfully, 

P. I. Allen, 

Commissioner . 






[Public— No. 84.] 

An Act To authorize the registration of trade-marks used in com- 
merce with foreign nations or among the several States or with Indian tribes, and to 
protect the same. 

Be it enacted by the Senate and House of Representatives of the United 
States of America in Congress assembled. That the owner of a trade- 
mark used in commerce with foreign nations, or among the several 
States, or with Indian tribes, provided such owner shall be domiciled 
within the territory of the United States, or resides in or is located in 
any foreign country which, by treaty, convention, or law, affords 
similar privileges to the citizens of the United States, may obtain reg- 
istration for such trade-mark \>y complying with the following require- 
ments: First, hy filing in the Patent Office an application therefor, in 
writing, addressed to the Commissioner of Patents, signed by the 
applicant, specifying his name, domicile, location, and citizenship; 
the class of merchandise and the particular description of goods com- 
prised in such class to which the trade-mark is appropriated ; a descrip- 
tion of the trade-mark itself, and a statement of the mode in which 
the same is applied and affixed to goods, and the length of time during 
which the trade-mark has been used. With this statement shall be 
filed a drawing of the trade-mark, signed by the applicant, or his 
attorney, and such number of specimens of the trade-mark, as actually 
used, as may be required by the Commissioner of Patents. Second, 
by paying into the Treasury of the United States the sum of ten dol- 
lars, and otherwise complying with the requirements of this Act and 
such regulations as may be prescribed by the Commissioner of Patents. 

Sec. 2. That the application prescribed in the foregoing section, in 
order to create any right whatever in favor of the party filing it, must 
be accompanied by a written declaration verified by the applicant, or 
by a member of the firm or an officer of the corporation or association 
applying, to the effect that the applicant believes himself or the firm , 
corporation, or association in whose behalf he makes the application 
to be the owner of the trade-mark sought to be registered, and that 
no other person, firm, corporation, or association, to the best of the 
applicant's knowledge and belief, has the right to such use, either in 
the identical form or in such near resemblance thereto as might be 
calculated to deceive; that such trade-mark is used in commerce among 
the several States, or with foreign nations, or with Indian tribes, and 
that the description and drawing presented truly represent the trade- 
mark sought to be registered. If the applicaut resides or is located 
in a foreign country, the statement required shall, in addition to the 
foregoing, set forth that the trade-mark has been registered by the 
applicant, or that an application for the registration thereof has been 
filed by him in the foreign country in which he resides or is located, 
and shall give the date of such registration, or the application therefor, 
as the case may be, except that in the application in such cases it shall 
not be necessary to state that the mark has been used in commerce 
with the United States or among the States thereof. The verification 
required by this section may be made before any person within the 




?/ 



-* .- ' 



'. 



o ir™- 84.] 

United States authorized by law to administer oaths, or, when the 
aSfcant resides in a foreign country, before any minister charge 
SSSes consul, or commercial agent holding commission under the 
Gove rnment oi "the United States, or before any notary public judge 
or Wfetrate having an official seal and authorized to administer oaths 
°n IK iign country in which the applicant may be whose authority 
shall be proved by a certificate of a diplomatic or consular officer ot 

^sS^^at every applicant for registration of a trade-mark or for 
renewal of registration of a trade-mark, who is not domiciled within the 
United States , shall, before the issuance of the certificate oi registra- 
tion at hereinafter provided for, designate, ^.^V^SSiefot 
in the Patent Office, some person residing within the United states on 
whom process Notice of proceedings affecting the right of ownership 
of the trade-mark of which such applicant may claim to be the owner 
broSt under the provisions of this Act or under other laws of the 
UnSd States, mar be served, with the same force and effect as .if ei ved 
upon the applicant or registrant in person. For the purposes of this 
Act it shall 1 be deemed sufficient to serve such notice upon such applicant, 
retail or representative by leaving a copy of such process or notice 
addressed to him at the last address of which the Commissioner of 
Patents has been notified. . „, , . 

Sec. 4. That an application for registration of a trade-mark faledin 
this country by any person who has previously »g^} n %* ? SJ 
foreign country which, by treaty, convention, or law, affoids bimUai 
priv feges to citizens of the United States an application tor registra- 
tion of the same trade-mark shall be accorded the same force and effect 
as would be accorded to the same application it filed in this country 
onThe date on which application for registration of the same trade- 
mark was first filed in such foreign country: Provided, That such 
Scation is filed in this country within four months trom the date 
on which the application was first filed, in such foreign country: And 
provided, That certificate of registration shall not be issued for any 
Zk for' registration of which application has been filed by an apph- 
Snt located in a foreign country until such mark has been actually 
registered by the applicant in the country in which he is located. 

Sec 5 That no mark by which thegoods of the owner of the mark 
may be distinguished from other goods of the same class shall be 
Tfused registrf tion as a trade-mark on account of the nature of such 

mark unless such mark — „,,.«..»,. 

M Consists of or comprises immoral or scandalous mattei , _ _ 
b) Consists of or comprises the flag or coat of arms or other insig- 
nia of the United States, or any simulation thereof , or of any ^State oi 
municipality, or of any foreign nation: Provided That tiade- marks 
which L identical with a registered or known trade-mark owned and 
in use by another, and appropriated to merchandise oi ! the same 
descriptive properties, or which so nearly resemble a registered or 
known trade-mark owned and in use by another, and appropriated to 
merchandise of the same descriptive properties as to be likel i jo 
cause confusion or mistake in the mind ot the public, or to deceive pur- 
chasers, shall not be registered: Provided, That no mark which con- 
sists merely in the name of an individual, firm, corporation, or asso- 
ciation, not written, printed, impressed, or woven in some ff^^ 
or distinctive manner or in association with a portrait of the indn id 



[Pub. 84.] 3 

ual, or merely in words or devices which are descriptive of the goods 
with which they are used, or of the character or quality of such goods, 
or merely a geographical name or term, shall be registered under the 
terms of this Act: Provided further, That no portrait of a living indi- 
vidual may be registered as a trade-mark, except by the consent of 
such individual, evidenced by an instrument in writing: And praoided. 
further, That nothing herein shall pi-event the registration of any 
mark used by the applicant or his predecessors, or by those from whom 
title to the mark is derived, in commerce with foreign nations or 
among the several States, or with Indian tribes, which was in actual 
and exclusive use as a trade-mark of the applicant or his predecessors 
from whom he derived title for ten years next preceding the passage 
of this Act. 

Sec. 6. That on the filing of an application for registration of a 
trade-mark which complies with the requirements of this Act, and the 
payment of the fees herein provided for, the Commissioner of Patents 
shall cause an examination thereof to be made; and if on such exami- 
nation it shall appear that the applicant is entitled to have his trade- 
mark registered under the provisions of this Act, the Commissioner 
shall cause the mark to be published at least once in the Official Gazette 
of the Patent Office. Any person who believes he would be damaged 
by the registration of a mark may oppose the same by filing notice 
of opposition, stating the grounds therefor, in the Patent Office within 
thirty days after the publication of the mark sought to be registered, 
which said notice of opposition shall be verified by the person filing 
the same before one of the officers mentioned in section two of this 
Act. If no notice of opposition is filed within said time the Commis- 
' sioner shall issue a certificate of registration therefor, as hereinafter 
provided for. If on examination an application is refused, the Com- 
missioner shall notify- the applicant, giving him his reasons therefor. 

Sec. 7. That in all cases where notice of opposition has been filed 
the Commissioner of Patents shall notify the applicant thereof and 
the grounds therefor. 

Whenever application is made for the registration of a trade-mark 
which is substantially identical with a trade-mark appropriated to 
goods of the same descriptive properties, for which a certificate of 
registration has been previously issued to another, or for registration 
of which another has previously made application, or which so nearly 
resembles such trade-mark, or a known trade-mark owned and used 
by another, as, in the opinion of the Commissioner, to be likely to be 
mistaken therefor by the public, he may declare that an interference 
exists as to such trade-mark, and in every case of interference or 
opposition to registration he shall direct the examiner in charge of 
interferences to determine the question of the right of registration to 
such trade-mark, and of the sufficiency of objections to registration, 
in such manner and upon such notice to those interested as the Com- 
missioner may by rules prescribe. 

The Commissioner may refuse to register the mark against the regis- 
tration of which objection is filed, or may refuse to register both of 
two interfering marks, or may register the mark, as a trade-mark, for 
the person first to adopt and use the mark, if otherwise entitled to 
register the same, unless an appeal is taken, as hereinafter provided for, 
from his decision, by a party interested in the proceeding, within such 
time (not less than twent}- days) as the Commissioner ma}- prescribe. 





93 



4 [POB. 84.] 

Sec. 8. That every applicant for the registration of a trade-mark, 
or for the renewal of the registration of a trade-mark, which applica- 
tion is refused, or a party to an interference against whom a decision 
has been rendered, or a party who has filed a notice of opposition as 
to a trade-mark, may appeal from the decision of the examiner in 
charge of trade-marks, or the examiner in charge of interferences, as 
the case may be, to the Commissioner in person, having once paid the 
fee for such appeal. 

Sec. 9. That if an applicant for registration of a trade-mark, or a 
party to an interference as to a trade-mark, or a party who has filed 
opposition to the registration of a trade-mark, or party to an applica- 
tion for the cancellation of the registration of a trade-mark, is dissat- 
isfied with the decision of the Commissioner of Patents, he may appeal 
to the court of appeals of the Disti'ict of Columbia, on complying with 
the conditions required in case of an appeal from the decision of the 
Commissioner by an applicant for patent, or a party to an interference 
as to an invention, and the same rules of practice and procedure shall 
govern in every stage of such proceedings, as far as the same may be 
applicable. 

Sec. 10. That every registered trade-mark, and every mark for the 
registration of which application has been made, together with the 
application for registration of the same, shall be assignable in connec- 
tion with the good will of the business in which the mark is used. 
Such assignment must be by an instrument in writing and duly 
acknowledged according to the laws of the countrj' or State in which 
the same is executed; any such assignment shall be void as against any 
subsequent purchaser for a valuable consideration, without notice, 
unless it is recorded in the Patent Office within three months from date 
thereof. The Commissioner shall keep a record of such assignments. 

Sec. 11. That certificates of registration of trade-marks shall be 
issued in the name of the United States of America, under the seal of 
the Patent Office, and shall be signed by the Commissioner of Patents, 
and a record thereof, together with printed copies of the drawing and 
statement of the applicant, shall be kept in books for that purpose. 
The certificate shall state the date on which the application for reg- 
istration was received in the Patent Office. Certificates of registra- 
tion of trade-marks may- be issued to the assignee of the applicant, but 
the assignment must first be entered of record in the Patent Office. 

Written or printed copies of any records, books, papers, or drawings 
relating to trade-marks belonging to the Patent Office, and of certifi- 
cates of registration, authenticated by the seal of the Patent Office and 
certified bj' the Commissioner thereof, shall be evidence in all cases 
wherein the originals could be evidence; and any person making appli- 
cation therefor and paying the fee required by law shall have certified 
copies thereof. 

Skc. 12. That a certificate of registration shall remain in force for 
twenty years, except that in the case of trade-marks previously regis- 
tered in a foreign country such certificates shall cease to be in force on 
the day on which the trade-mark ceases to be protected in such foreign 
country, and shall in no case remain in force more than twenty 3 r ears, 
unless renewed. Certificates of registration may be, from 'time to 
time, renewed for like periods on payment of the renewal fees required 
by this Act, upon request by the registrant, his legal representatives, 
or transferees of record in the Patent Office, and such request may be 



9? 



[Pub. 84.] 5 

made at any time not more than six months prior to the expiration of 
the period for which the certificates of registration were issued or 
renewed. Certificates of registration in force at the date at which this 
Act takes effect shall remain in force for the period for which they 
were issued, but shall be renewable on the same conditions and for the 
same periods as certificates issued under the provisions of this Act, 
and when so renewed shall have the same force and effect as certificates 
issued under this Act. 

Sec. 13. That whenever any person shall deem himself injured by 
the registration of a trade-mark in the Patent Office he may at any 
time apply to the Commissioner of Patents to cancel the registra- 
tion thereof. The Commissioner shall refer such application to 
the examiner in charge of interferences, who is empowered to hear 
and determine this question and who shall give notice thereof to the 
registrant. If it appear after a hearing before the examiner that 
the registrant was not entitled to the use of the mark at the date of 
his application for registration thereof, or that the mark is not used 
by the registrant, or has been abandoned, and the examiner shall so 
decide, the Commissioner shall cancel the registration. Appeal may 
be taken to the Commissioner in person from the decision of examiner 
of interferences. 

Sec. 14. That the following shall be the rates for trade-mark fees: 

On filing each-original application for registration of a trade-mark, 
ten dollars: Provided, That an application for registration of a trade- 
mark pending at the date of the passage of this Act, and on which 
certificate of registration shall not have issued at such date, may, at 
the option of the applicant, be proceeded with and registered under 
the provisions of this Act without the payment of further fee. 

On filing each application for renewal of the registration of a trade- 
mark, ten dollars. 

On filing notice of opposition to the registration of a trade-mark, 
ten dollars. 

On an appeal from the examiner in charge of trade-marks to the 
Commissioner of Patents, fifteen dollars. 

On an appeal from the decision of the examiner in charge of inter- 
ferences, awarding ownership of a trade-mark or canceling the regis- 
tration of a trade-mark, to the Commissioner of Patents, fifteen dollars. 

For certified and uncertified copies of certificates of registration and 
other papers, and for recording transfers and other papers, the same 
fees as required by law for such copies of patents and for recording 
assignments and other papers relating to patents. 

Sec. 15. That sections forty -nine hundred and thirty-five and fo:'ty- 
nine hundred and thirty-six of the Revised Statutes, relating to the 
payment of patent fees and to the repayment of fees paid by mistake, 
are hereby made applicable to trade-mark fees. \ 

Sec. 16. That the registration of a trade-mark under the provisions 
of this Act shall be prima facie evidence of ownership. Any person 
who shall, without the consent of the owner thereof, reproduce, 
counterfeit, copy, or colorably imitate any such trade-mark and affix 
the same to merchandise of substantially the same descriptive proper- 
ties as those set forth in the registration, or to labels, signs, prints, 
packages, wrappers, or receptacles intended to be used upon or in con\ 
nection with the sale of merchandise of substantially the same descrip- 
tive properties as those set forth in such registration, and shull use, 






b [PCB. 84.] 

or shall have used, such reproduction, counterfeit, copy, or colorable 
imitation in commerce among the several States, or with a foreign 
nation, or with the Indian tribes, shall be liable to an action for damages 
therefor at the suit of the owner thereof; and whenever in am' such 
action a verdict is rendered for the plaintiff, the court may enter judg- 
ment therein for any sum above the amount found by the verdict as 
the actual damages, according to the circumstances of the case, not 
exceeding three times the amount of such verdict, together with the 
costs. 

Sec. 17. That the circuit and territorial courts of the United States 
and the supreme court of the District of Columbia shall have original 
jurisdiction, and the circuit courts of appeal of the United States and 
the court of appeals of the District of Columbia shall have appellate 
jurisdiction of all suits at law or in equity respecting trade-marks 
registered in accordance with the provisions of this Act, arising under 
the present Act, without regard to the amount in controversy. 

Sec. 18. That writs of certiorari may be granted by the Supreme 
Court of the United States for the review of cases arising under this 
Act in the same manner as provided for patent cases by the Act cre- 
ating the circuit court of appeals. 

Sec. 19. That the several courts vested with jurisdiction of cases 
arising under the present Act shall have power to grant injunctions, 
according to the course and principles of equity, to prevent the viola- 
tion of any right of the owner of a trade-mark registered under this 
Act, on such terms as the court may deem reasonable; and upon a 
decree being rendered in any such case for wrongful use of a trade- 
mark the complainant shall he entitled to recover, in addition to the 
profits to be accounted for by the defendant, the damages the com- 
plainant has sustained thereby, and the court shall assess t,he same or 
cause the same to be assessed under its direction. The court shall have 
the same power to increase such damages, in its discretion, as is given 
by section sixteen of this Act for increasing damages found by vei'dict 
in actions of law; and in assessing profits the plaintiff shall be required 
to prove defendant's sales only; defendant must prove all elements of 
cost which are claimed. 

Sec. 20. That in any case involving the right to a trade-mark regis- 
tered in accordance with the provisions of this Act, in which the ver- 
dict has been found for the plaintiff, or an injunction issued, the court 
may order that all labels, signs, prints, packages, wrappers, or recep- 
tacles in the possession of the defendant, bearing the trade-mark of 
the plaintiff or complainant, or any reproduction, counterfeit, copy, 
or colorable imitation thereof, shall be delivered up and destroyed. 
Any injunction that may be granted upon hearing, after notice to the 
defendant, to prevent the violation of any right of the owner of a 
trade-mark registered in accordance with the provisions of this Act, 
by any circuit court of the United States, or by a judge thereof, may 
be served on the parties against whom such injunction maybe granted 
anywhere in the United States where they may be found, "and shall be 
operative and may be enforced by proceedings to punish for contempt, 
or otherwise, by the court by which such injunction was granted, or 
by any other circuit court, or judge thereof, in the United States, or 
by the supreme court of the District of Columbia, or a judge thereof. 
The said courts, or judges thereof, shall have jurisdiction to enforce 
said injunction, as herein provided, as fully as if the injunction had 



?t 



[PCB. 84.] i 

been granted by the circuit court in which it is sought to be enforced. 
The clerk of the court or judge granting the injunction shall, when 
required to do so by the court before which application to enforce said 
injunction is made, transfer without delay to said court a certified 
copy of all the papers on which the said injunction was granted that 
are on file in his office. 

Sec. 21. That no action or suit shall be maintained under the pro- 
visions of this Act in any case when the trade-mark is used in unlawful 
business, or upon any article injurious in itself, or which mark has 
been used with the design of deceiving the public in the purchase of 
merchandise, or has been abandoned, or upon any certificate of regis- 
tration fraudulently obtained. 

Sec. 22. That whenever there are interfering registered trade-marks, 
any person interested in any one of them may have relief against the 
interfering registrant, and all persons interested under him, by suit in 
equity against the said registrant; and the court, on notice to adverse 
parties and other due proceedings had according to the course of 
equity, may adjudge and declare either of the registrations void in 
whole or in part according to the interest of the parties in the trade- 
mark, and may order the certificate of registration to be delivered up to 
the Commissioner of Patents for cancellation. 

Sec. 23. That nothing in this Act shall prevent, lessen, impeach, or 
avoid any remedy at law or in equity which any party aggrieved by 
any wrongful use of any trade-mark might have had if the provisions 
of this Act had not been passed. 

Sec. 24. That all applications for registration pending in the office 
of the Commissioner of Patents at the time of the passage of this Act 
may be amended with a view to bringing them, and the certificate 
issued upon such applications, under its provisions, and the prosecu- 
tion of such applications may be proceeded with under the provisions 
of this Act. 

Sec. 25. That any person who shall procure registration of a trade- 
mark, or entry thereof, in the office of the Commissioner of Patents 
by a false or fraudulent declaration or representation, oral or in writ- 
ing, or by any false means, shall be liable to pay any damages sustained 
in consequence thereof to the injured party, to be recovered by an 
action on the case. 

Sec. 26. That the Commissioner of Patents is authorized to make 
rules and regulations, not inconsistent with law, for the conduct of 
proceedings in reference to the registration of trade-marks provided 
for by this Act 

Sec. 27. That no article of imported merchandise which shall copy or 
simulate the name of any domestic manufacture, or manufacturer or 
trader, or of any manufacturer or trader located in any foreign country 
which, by treaty, convention, or law affords similar privileges to citi- 
zens of the United States, or which shall copy or simulate a trade-mark 
registered in accordance with the provisions of this Act, or shall bear 
a name or mark calculated to induce the public to believe that the 
article is manufactured in the United States, or that it is manufactured 
in any foreign country or locality other than the country or locality 
in whicb it is in fact manufactured, shall be admitted to entry at any 
custom-house of the United States; and, in order to aid the officers of 
the customs in enforcing this prohibition, any domestic manufacturer 
or trader, and any foreign manufacturer or trader, who is entitled 



s 



[Pub. 84.] 






under the provisions of a treaty, convention, declaration, or agree- 
ment between the United States and any foreign country to the advan- 
ces afforded by law to citizens of the United btates in respect to 
trade-marks and commercial names, may require his name and resi- 
dence, and the name of the locality in which his goods are manufac- 
tured and a copy of the certificate of registration of his trade-mark, 
issued in accordance with the provisions of this Act, to he recorded in 
books which shall be kept for this purpose in the Department of the 
Treasury, under such regulations as the Secretary of the Ireasury 
shall prescribe, and may furnish to the Department facsimiles of his 
name, the name of the "locality in which his goods are manufactured, 
or of his registered trade-mark; and thereupon the Secretary of the 
Treasury shall cause one or more copies of the same to be transmitted 
to each collector or other proper officer of customs. 

Sec. 28. That it shall be the duty of the registrant to give notice to 
the public that a trade-mark is registered, either by affixing thereon 
the words "Registered in U. S. Patent Office," or abbreviated thus, 
"Reg. U. S. Pat. Off.," or when, from the character or size of the 
trade-mark, or from its manner of attachment to the article to which 
it is appropriated, this can not be done, then by affixing a label con- 
taining a like notice to the package or receptacle wherein the article 
or articles are inclosed; and in any suit for infringement by a party 
failino- so to give notice of registration no damages shall be recovered, 
except on proof that the defendant was duly notified of infringement, 
and continued the same after such notice. 

Sec. 29. That in construing this Act the following rules must be 
observed, except where the contrary intent is plainly apparent from 
the context thereof : The United States includes and embraces all terri- 
tory which is under the jurisdiction and control of the United States. 
The word "States" includes and embraces the District of Columbia, 
the Territories of the United States, and such other territory as shall 
be under the jurisdiction and control of the United States. The terms 
"person" and "owner," and any other word or term used to desig- 
nate the applicant or other entitled to a benefit or privilege or rendered 
liable under the provisions of this Act, include a firm, corporation, or 
association as well as a natural person. The term "applicant" and 
"registrant" embrace the successors and assigns of such applicant or 
registrant. The term "trade-mark" includes any mark which is enti- 
tled to registration under the terms of this Act and whether registered 
or not and a trade-mark shall be deemed to be "affixed" to an article 
when it is placed in any manner in or upon either the article itself or 
the receptacle or package or upon the envelope or other thing in, by, 
or with which the goods are packed or inclosed or otherwise prepared 
for sale or distribution. , 

Sec. 30. That this Act shall be in force and take effect April first, 
nineteen hundred and five. All Acts and parts of Acts inconsistent 
with this Act are hereby repealed except so far as the same may apply 
to certificates of registration issued under the Act of Congress approved 
March third, eighteen hundred and ei^htv-on.e,, ,*nti^''A n Act , fco 
authorize thr,re^f|'q^EN£Fa<©*naiySifod. , pik)tect i tD^8anie," or 
under the Act approved August/tfjf-th/eighteen hundred Aftd ewkty- 
two, entitled "An Act relating tafrbQft^&J&mM'tx^&to^'' 
Approved, February 20, 1905. 

The above is ^ true copy 

certified by the 




on 



iginal 



as 





Chief Clerk. 







[Public— No. 4.] 

An Act To incorporate the American National Red Cross. 

Whereas on the twenty-second of August, eighteen hundred and 
ty-f our, at Geneva, Switzerland, plenipotentiaries respectively rep- 
tenting Italy, Baden, Belgium, Denmark, Spain, Portugal, France, 
ussia, Saxony, and Wurttemberg and the Federal Council of 
ritzerland agreed upon ten articles of a treaty or convention for the 
rpose of mitigating the evils inseparable from war; of ameliorating 
! condition of soldiers wounded on the field of battle, and particu- 
\y providing, among other things, in effect, that persons employed 
hospitals and in according relief to the sick and wounded and sup- 
es for this purpose shall be deemed neutral and entitled to protec- 
n; and that a distinctive and uniform flag shall be adopted for 
>pitals and ambulances and convoys of sick and wounded and an arm 
ige for individuals neutralized; and 

Whereas said treaty has been ratified by all of said nations, and by 
lers subsequently, to the number of forty -three or more, including 
3 United States of America; and 

Whereas the International Conference of Geneva of eighteen hun- 
3d and sixty-three recommended "that there exist in every country 
committee whose mission consists in cooperating in times of war 
th the hospital service of the armies by all means in its power;" and 
Whereas a permanent organization is an agency needed in every 
tion to carrj r out the purposes of said treat}% and especially to secure 
pplies and to execute the humane objects contemplated by said treaty, 
th the power to adopt and use the distinctive flag and arm badge 
ecified by said treaty in article seven, on which shall be the sign of 
3 Red Cross, for the purpose of cooperating with the "Comite 
ternational de Secours aux Militaires Blesses" (International Com- 
ttee of Belief for the Wounded in War); and 

Whereas in accordance with the requirements and customs of said 
ternational body such an association adopting and using said insignia 
is formed in the city of Washington, District of Columbia, in July, 
jhteen hundred and eighty-one, known as "The American National 
ssociation of the Red Cross," reincorporated April seventeenth, 
^hteen hundred and ninety-three, under the laws of the District of 
flumbia, and reincorporated by Act of Congress in June, nineteen 
indred; and 

Whereas it is believed that the importance of the work demands a 
peal of the present charter and a reincorporation of the society 
ider Government supervision: Now, therefore, 

Be it enacted by the Senate and House of Representatives of the United 
tates of America in Congress assembled, That Clara Barton, Hilary 
. Herbert, Thomas F. Walsh, Charles C. Glover, Charles J. Bell, 
iibel T. Boardman, George Dewey, William R. Day, Nelson A. 
ales, James Tanner, William K. Van Reypen, John M. Wilson, 
imon Wolf, James R. Garfield, Gifford Pinchot, S. W. Woodward, 
lary A. Logan, Walter Wyman, of Washington, District of Colum- 





2 [Pub. 4.1 

bia; George H. Shields, of Missouri; William H. Taft, F. B. Loomis, 
Samuel Mather, of Ohio; Spencer Trask, Robert C. Ogden, Cleveland 
H. Dodge, George C. Boldt, William T. Wardwell, John G. Carlisle, 
George B. McClellan, Elizabeth Mills Reid, Margaret Carnegie, of 
New York; John H. Converse, Alexander Mackay-Smith, J. Wilkes 
O'Neill, H. Kirke Porter, of Pennsylvania; Richard Olney, W. 
Murray Crane, Henry L. Higginson, William Draper, Frederick H. 
Gillett, of Massachusetts; Marshall Field, Robert T. Lincoln, Lam- 
bert Tree, of Illinois; A. G. Kaufman, of South Carolina: Alexander 
W. Terrell, of Texas; George Gray, of Delaware; Redtield Proctor, 
of Vermont; John W. Foster, Noble C. Butler, Robert W. Miers, of 
Indiana; John Sharp Williams, of Mississippi; William Alden Smith, 
of Michigan; Horace Davis, W. W. Morrow, of California; Daniel 
C. Oilman, Eugene Lovering, of Maryland; J. Taylor Ellyson, of 
Virginia; Daniel R. Noyes, of Minnesota; Emanuel Fiske, Marshall 
Fiske, of Connecticut, together with five other persons to be named 
by the President of the United States, one to be chosen from each of 
the Departments of State, War, Navy, Treasury, and Justice, their 
associates and successors, are hereby created a body corporate and 
politic in the District of Columbia. 

Sec. 2. That the name of this corporation shall be "The American 
National Red Cross," and by that name shall have perpetual succession, 
with the power to sue and be sued in courts of law and equity within 
the jurisdiction of the United States; to have and to hold such real 
and personal estate as shall be deemed advisable and to accept bequests 
for the purposes of this corporation hereinafter set forth; to adopt a 
seal and the same to alter and destroy at pleasure; and to have the 
right to have and to use, in carrying out its purposes hereinafter 
designated, as an emblem and badge, a Greek red cross on a white 
ground, as the same has been described in the treaty of Geneva, August 
twenty-second, eighteen hundred and sixt3 T -four, and adopted by the 
several nations acceding thereto; to ordain and establish by-laws and 
regulations not inconsistent with the laws of the United States of 
America or any State thereof, and generally to do all such acts and 
things (including the establishment of regulations for the election of 
associates and successors) as may be necessary to carry into effect the 
provisions of this Act and promote the purposes of said organization; 
and the corporation hereby created is designated as the organization 
which is authorized to act in matters of relief under said treaty. In 
accordance with article seven of the treaty, the delivery of the brassard 
allowed for individuals neutralized in time of war shall be left to 
military authority. 

Sec. 3. That the purposes of this corporation are and shall be — 

First. To furnish volunteer aid to the sick and wounded of armies 
in time of war, in accordance with the spirit and conditions of the con- 
ference of Geneva of October, eighteen hundred and sixty-three, and 
also of the treaty of the Red Cross, or the treaty of Geneva, of August 
twenty-second, eighteen hundred and sixty-four, to which the United 
States of America gave its adhesion on March first, eighteen hundred 
and eighty-two. 

Second. And for said purposes to perform all the duties devolved 
upon a national society by each nation which has acceded to said treaty. 

Third. To succeed to all the rights and property which have been 
hitherto held and to all the duties which have heretofore been per- 






XSr 



4 s «• 



i. 



[Pub. 4.] 6 

formed by the American National Red Cross as a corporation duly 
incorporated by Act of Congress June sixth, nineteen hundred, which 
Act is hereby repealed and the organization created thereby is hereby 
dissolved. 

Fourth. To act in matters of voluntary relief and in accord with the 
military and naval authorities as a medium of communication between 
the people of the United States of America and their Army and Navy, 
and to act in such matters between similar national societies of other 
governments through the "Comite International de Secours," and the 
Government and the people and the Army and Navy of the United 
States of America. 

Fifth. And to continue and carry on a system of national and inter- 
national relief in time of peace and apply the same in mitigating the 
sufferings caused by pestilence, famine, fire, floods, and other great 
national calamities, and to devise and carry on measures for preventing 
the same. 

Sec. 4. That from and after the passage of this Act it shall be 
unlawful for any person within the jurisdiction of the United States 
to false! y and fraud ulentTy hold himself out as, or represent or pretend 
himself to be, a member of, or an agent for, the American National 
Red Cross, for the purpose of soliciting, collecting, or receiving money 
or matei'ial;_pr for an y person to wear or display the sign of the Red 
Cross, or any insignia colored in imitation thereof for the fraudulent 
purpose of inducing the belief that he is a member of, or an agent for, 
the American National Red Cross. No r shal l it be lawful for any 

!>erson or corporation, other than the Red Cross of America, not now 
awfully ent itled to use the sign of the Red Cross , hereafter to use 
sii ch sign or any insignia colored in imitation thereof Tor the purposes 
of trade or as an advertisement to induce the sale of any article what- 
soever. If an} 7 person violates the provisions of this section, he shall 
be guilty of a misdemeanor and shall be liable to a tine of not less than 
one nor more than five hundred dollars, or imprisonment for a term 
not exceeding one year, or both, for each and every offense. The fine 
so collected shall be paid to the American National Red Cross. 

Sec. 5. That the governing body of the said American National Red 
Cross shall consist, in the first instance, of a central committee num- 
bering eighteen persons, to be appointed in the manner following, 
namel} 7 : Six by the incorporators herein named and twelve by the 
President of the United States, one of whom shall be designated by 
the President to act as chairman. It shall be the duty of the central 
committee to organize with as little delay as possible State and Terri- 
torial societies, including the District of Columbia, under such rules 
as the said committee may prescribe. When six or more State or Ter- 
ritorial societies have been formed, thereafter the central committee 
shall be composed as follows: Six to be appointed by the incorpora- 
tors, six by the representatives of the State and Territorial societies at 
the annual meeting of the incorporators and societies, and six by the 
President of the United States, one of whom shall be designated by 
him as chairman and one each to be named by him from the Depart- 
ments of State, War, Navy, Treasury, and Justice. 

The first six members of the central committee elected by the incor- 
porators at the first annual meeting, and the first six members of the 
central committee elected by the State and Territorial delegates, shall 
when elected select by lot from their number two members to serve 



qui-?-alent to "After the 
pie, 10 Col'. 387; State 
. Mounts, 36 W. Va., 179. 




'}. Jrf ?/*£ 



OOMMISSIOHEB'S DECISIONS, 




Ex PARTE HoLBEETi 

Decided March SO, 1905. 
i-JiAHKS— "Optine" Rejected on "Optal." 
le word "Optine" refused registration in view of the prior 
stered mark "Optal," since the resemblance [between the 
ks is such as to cause confusion and to be likely to deceive 
chasers as to the origin of the goods. 

APPEAL. 

TRADE-MARK FOR MEDICINE. ' «- 

ssrs. Paul & Paul for the applicant. 
N, Commissioner: 

s is an appeal from the decision of the Examiner of 
i-Marks refusing to register the word "Optine" as a 
-mark in view of a prior registered mark, No. 34,990, 
il , 1900, for the word " Optal," applied to^goods of sub- 
ally the same descriptive properties. 
s only question for consideration here is whether the 
"Optine" so nearly resembles the word "Optal" as 
likely to deceive purchasers and cause confusion in 
ade as to the origin of the goods to which the words 
■plied. Section 3 of the Trade-Mark Act of 1SS1 pro- 
that — 

no alleged trade-mark shall be registered * * * which 
•ly resembles some other person's lawful trade-mark as to 
ly to cause confusion or mistake in the mind of the public, 
eceive purchasers. 

withstanding the differences in the style of the print- 
Dpted by the parties, it is believed that these marks so 
resemble each other as to cause confusion and to be 
to lead purchasers to accept the articles made by one 
acturer supposing them to be articles made by the 

i case seems to fall within the principles announced 
following decisions: Ex parte Sodafoam Balcing Pow- 
., (96 O. G., 1239:) ex parte Vogel & Son, (990. G., 
ex parte Ino Medicine Company, (101 O. G., S87.) 
decision of the Examiner of Trade-Marks refusing 
ation is affirmed. 




I 



4 [Pub. 4.] 

one .year, two members to serve two years, and two members to serve 
three years, and each subsequent election of members shall be for a 
period of three years or until their successoi - s are duly elected and 
qualify. The six members of the central committee appointed by the 
President at the annual meeting shall serve for one year. 

The President shall fill as soon as may be any vacancy that may 
occur by death, resignation, or otherwise in the chairmanship or in 
the membership of the central committee appointed by him. And 
any vacancy that may occur in the six members of the central commit- 
tee herein provided to be appointed by the incorporators or in the six 
to be appointed by the representatives of the State societies shall be 
tilled by temporary appointments to be made by the remaining mem- 
bers of the six in which the vacancj 7 or vacancies may occur, such 
appointees to serve until the next annual meeting. 

The central committee shall have power to appoint from its own 
members an executive committee of seven persons, five of whom shall 
be a quorum, who, when the central committee is not in session, shall 
have and exercise all the powers of the central committee. 

The Secretary of War shall within thirty days after the passage of 
this Act call a meeting at a time and place to be designated by him in 
the city of Washington of the incorporators hereunder, giving at least 
thirty days' notice thereof in one or more newspapers, and the annual 
meeting of said incorporators, their associates and successors, shall 
thereafter be held in said city on the first Tuesday after the first Mon- 
day in December, the first of said meetings to be held in December, 
nineteen hundred and five. - Fifteen members shall constitute a quorum 
at any annual or special meeting. 

Voting by proxy shall not be allowed at any meeting of the incor- 
porators, annual or special, nor at any meeting of State or Territorial 
societies organized under the provisions of this charter. 

Sec. 6. That the said American National Red Cross shall on the first 
day of January of each j^ear make and transmit to the Secretary of 
War a report of its proceedings for the preceding year, including a 
full, complete, and itemized report of receipts and expenditures of 
whatever kind, which report shall be duly audited by the War Depart- 
ment, and a copy of said report shall be transmitted to Congress by 
the War Department. 

Sec. 7. That Congress shall have the right to repeal, alter, or amend 
this Act at any time. 

Approved, January 5, 1905. 









?& ^ 

















- 




,, • " l • * 


















; U 


K 


"After 


the 


passage of the 


act" 


equivalent 


to 


"After 


■ the 


act goes 


into 


effect." 


Herding 


V. P( 


3ople, 10 C< 


alt. 


387; 


State 


v. Bemis 


, 45 Neb. 


724; 


Compare 


State 


v. Mounts, 


36 


¥. Va. 


, 179. 




us: of, i 




COMMISSIONER'S DECISIONS. Aljj^ 

"Ex parte Snyder. 1 

Decided Man% SO, 1905. 
trade-marks— " dlamonddust " refused.on "dlamqitd" and 
"Diamond Mills." 
The word " Diamonddust " refused registration as a trade- 
mark in view of the prior marks "Diamond" and "Diamond 
Mills " applied to the same class of goods. 

On APPEAL. 

TRADE-MARK FOR CEREALS. 

Mr. Lewis Heininger for the applicant. 
Allen, Commissioner: • ■■■,.- 

This is an appeal from the decision of t'be Esaraiaer af 
Trade-Marks refusing to register the word ''Diamonddust" 
as a trademark for flour in view of t'ne prior registered 
marks to Lyons & Co., No. 12,592, September 22, 1885, and 
io North -'Dakota Milling Company, No. 22,319, January 
10/1893/ . : 

The first of these registered marks consists of the words 
"Diamond Mills" for flour, and the second consists of the 
word Diamond" placed upon the figure of a diamond, be- 
hind which appears the represent?.tion of stalks of wheat. 

The sole question here is whether the word "Diamond- 
dust" so nearly resembles the previously-registered marks 
"Diamond" and "Diamond Mills" as to be likely to de- 
ceive purchasers as to the origin of the goods upon which 
the marks appear. The word " Diajnond^jsundoubtedly 
the pred ominating f6atur e_af_alLof these marks and the one 
which would be likely to be remembered by the purchasers 
for the pur pose orjdenSiV ili g the goods de sired in making 
purchases subsequently. It is therefore believed that the 
marks so closely resemble each other that purchasers would 
be likely to accept goods sold under one of them supposing 
them to be the goods of the manufacturer using the other 
as a trade-mark. 

The decision of the Examiner of Trade-Marks refusing 
registration is affirmed. 



jlf7~J < f?' / 2G 



f 

•-. ■■ 



COMMISSIONER'S DECISIONS, 




EX PAETE HoLBERT. 

Decided March SO, 1905. 
Trade. Marks— "Optine" Rejected on "Optal." 

-i'he word "Optine" refused registration in view of the prior 
7 registered mark "Optal," since the resemblance jbetween the 
marks is such as to cause confusion and to be likely to deceive 
[ purchasers as to the origin of the goods. 

On APPEAL. 

TRADE-MARK FOR MEDICINE. ' •» 

Messrs. Paul & Paul for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register the word "Optine" as a 
trade-mark in view of a prior registered mark, No. 34,990, 
July 31, 1900, for the word "Optal," applied to]goods of sub- 
stantially the same descriptive properties. 

The only question for consideration here is whether the 
word "Optine" so nearly resembles the word "Optal" as 
to be likely to deceive purchasers and cause confusion in 
the trade as to the origin of the goods to which the words 
are applied. Section 3 of the Trade-Mark Act of 1SS1 pro- 
vides that— 

* * * no alleged trade-mark shall be registered * * * which 
so nearly resembles some other person's lawful trade-mark as to 
be likely to cause confusion or mistake in the mind of the public, 
or to deceive purchasers. 

Notwithstanding the differences in the style of the print- 
ing adopted by the parties, it is believed that these marks so 
nearly resemble each other as to cause confusion and to be 
likely to lead purchasers to accept the articles made by one 
manufacturer supposing them to be articles made by tho 
other. 

This case seems to fall within the principles announced 
in the following decisions: Ex parte Sodafoam Baling Pow- 
der Co., (96 O. G., 1239;) ex parte Vogel & Son, (99 O. G., 
2321;) ex parte Ino Medicine Company, (101 O. G., S87.) 

The decision of the Examiner of Trade-Mart-; refusing 
registration is affirmed. 




ft 






//^. /ft"? 



COMMISSIONER'S DECISIONS, 



EX PARTE KEET & ROUNTREE DrYGOODS COMPANY, 

Decided March 31, 1905. 

1. Trade-Marks— "Ozark"— Geographical Name— Regis- 

tration Refused. 
The word " Ozark " refused registration as a trade-mark, since 
, its moaning is primarily geographical. £ , j 

2. Same— Same— Same— Secondary Meanings Not Appreci- 

ated. 
While the word " Ozark " may have meanings other than geo- 
graphical, such meanings would not be known or aDDrp/iintod 
by the ordinary purchaser seeing the word used as a trade-marls 
upon goods. 

O.N APPEAL. 

TRADE-MARK FOR SHIRTS, PANTS, OVERALLS, ETC. 

Messrs. Knight Bros, for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register the word "Ozark" as a 
trade-mark for pants, overalls, and duck coats. 

The word "Ozark " has a well-known geographical mean- 
ing, and registration has been refused upon the ground that 
its meaning is primarily geographical. The appellant 
states that the word "Ozark " has other meanings besides 
its geographical meaning, and as an illustration says that 
in the Indian language it means "elevated and high." It 
urges that the geographical meaning of the word is second- 
ary and that it was not adopted as a trade-mark because of 
that meaning. 

While it may be true that the word has the meanings 
stated by the appellant, it is nevertheless true that these 
meanings would not be known or appreciated by the ordi- 
nary purchasers seeing the word used as a trade-mark upon 
goods. This case seems to be analogous to that considered 
in ex parte Falkmoerg, (115 O. G,, 1065,) wherein it was 
said: 

While the word "Mattawan" is of Indian origin, it is believed 
that its significance as such is known only to students of Indian 
languages and cannot, therefore, be held to havejto the general 
public an arbitrary significance which outweighs the geographical 
meaning which is to be ascribod to it. 

I am satisfied that the arbitrary or fanciful meaning of 
the word "Ozark" does not transcend its geographical 
meaning so as to give to the word an arbitrary significance 
when applied to articles of merchandise offered for sale. 
The primary meaning of the word to purchasers would be 
geographical, and therefore it was properly refused regis- 
tration. (Ex parte Siloam Springs Water Company, 113 
O. G., 1420.) 

The.decisjon of the Examiner of Trade-Marks is affirmed. 



y^y^ 



COPY . 



- - . H, 
gepatttroettt iff, tfec %ntcviox, 

Suited states galent ®tfxtt, 

"MCasMttgtotx, 1: @. April 15, 190 5. 



Mr. Robert S. Allyn, 

]?artlett, Brownell & Mitchell, 

41 Park Row, New York, N. Y. 
Sir: 

Your letter of the 12th instant is received, asking 
whether "opposition to registration" under section 6 of the act 
of February 20, 1905, would "be permitted by a person who simply 
believes the mark in question to be, for instance, descriptive, 
where the person does not h imself claim priority of use?" 

It is not believed that it was the intention of the 
legislative branch of the government in making this statute, by 
the use of the terms "any person who believes that he would be 
damaged ^oy the registration of a. mark may oppose the same," to 
mean simply one of the general public whose interests are repre- 
sented by the officials of the Patent Office in passing upon the 
merits' of amplications for registration. All questions of mer- 
its under this statute are to be transacted by the examiner of 
trade-marks, and it is to be noted that upon filing notice of op- 
position section 7 of this statute provides that the Commissioner 
"shall direct the examiner in charere of interferences to deter- 



mine the question of the right Of reristratiorr-to such trade-mark 

and of the sufficiency of objections to registration." 

This section, further provides: 

"The Commissioner may refuse to register the mark 
against the registration of which objection is filed x x 
unless an appeal is taken as hereinafter provided for from 
his decision by a party interested in the proceeding." 

It is provided by section 8 of this statute that: 

"A party who has filed a notice of opposition as to a 
trade-mark may appeal from the decision of x x the exami- 
ner in charge of interferences x x to the Commissioner 
in person, having once paid the fee for such appeal. " 

This statute further provides by section 14 for trade- 
mark fees: 

"On an appeal from the decision of the examiner in 
charge of interferences awarding ownership of a trade-mark 
x x to the Commissioner of Patents, fifteen dollars." 

Prom all these expressions of this statute it seems 
clear that the person entitled to make a valid opposition to reg- 
istration of the trade-mark must be found to possess some property 
right which would be diminished by such registration, wherebj^ "he 
* would be damaged by the registration," since in the absence of 
i any property right it cannot be seen that he would be in fact 
damaged. This conclusion keeps separate the jurisdiction of 
the examiner of trade-marks, who represents the people of the 
country at large in his determination of the merits of the case 



/0 S^J 



presented by the applicant for registration, and the jurisdiction 
of the examiner of interferences, whose function is to determine 
questions of title to registrable marks. 

Respectfully, 

F. I. Allen, 

Commissioner . 



r 



/«r*z_ zf "f- 




COMMISSIONER'S DECISIONS, 



Ex parte The Crescent Oil Company. 
Decided March 30, 190S. 
tfnADE-MARK— Anticipation— greyhound. 

a trade-mark consisting of the pictured a greyhound with tha 
word ••Kim-Lit.'" inclosed in a circle relused registration in 
oi a prior mark consisting of a picture of a greyhound to- 
gcther willi certain other words inclosed within a circle. 

Ox APPEAL. 

TRADE-MARK FOR LUBRICANTS. 

Th Crescent Oil Company pro sc. 
A i.i. en. Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register a mark which consists — 
* * * of the representation of a running greyhound inclosed in 
an annular band or figure and in the hand above the greyhound is 
the hyphenated word "Run-Lite " 

Registration has been refused in view of the prior regis- 
tration No. 21,486, July 19, 1892, Henry W. Peabody & 
Co. The registered mark consists of the representation of 
a greyhound associated with the words "Greyhound Brand. 
Amber A. A. Machinery Oil" and inclosed in a circle. 

The marks are applied to goods of substantially the same 
descriptive properties, and the question presented for de- 
termination is whether the inclusion of the greyhound in 
the two marks makes them so nearly resemble each other 
as to confuse the public or deceive purchasers as to the ori- 
gin or ownership of the goods to which the marks are ap- 
plied. The greyhound is undoubtedly the feature of both 
marks which would attract the attention of purchasers, 
and therefore it is believed that purchasers would be likely 
to he confused by the use of these marks upon the same 
class of goods. 

The decision of the Examiner of Trade-Marks is affirmed. 






//&. tff. iTT 5 



COMMISSIONER'S DECISIONS. 




Ex parte National Toilet Company. 

Piecided March 30, 1905. 
Trade-Marks— " Satino la "—Registration Refused. 

" Satinoia " refused registration as a trade-mark in view of the 
prior registered marks " Satin," " Satin Skin," and "Satin 
-feceat." 
Om appeal. 

TRADE-MARK FOR COSMETICS. 

Mr. W. A. Redmond for the applicant. 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register the word "Satinoia" as a 
trade-mark for cream ointment used as a toilet preparation 
in view of prior registered trade-marks "Satin," "Satin 
Skin," and "Satin Scent," used upon goods of substan- 
tially the same descriptive properties. 

In the case of Wood v. Hinchman (110 0. G., 600) it was 

said: 

It must he, held that the words "Satin," "Satinette," and 
' ' Satin Skin " are essentially the same trade-mark when applied to 
the same class of goods. 

The word "Satinoia" in the present case must be re- 
garded as bearing the same relation to prior registered 
marks and as not so different as to avoid confusion among 
purchasers. 

The decision of the Examiner of Trade-Marks is affirmed. 



//£ .rf'.v'f- 3 



COMMISSIONER'S DECISIONS. 




Ex parte The Dr. Pepper Company. 
Decided March 31, 1905. 

TR ^^;;; l ;:'';:S;raUonasatradc-in a rkforhever. 

Ox APPEAL. 

TRAUE-MAr.K run AERATED BEVERAGES AND SYRUPS FOR THE SAME, 

Mr. A. L.Jackson for the appellant. 

Aalen, Commissioner: 

Tl eeisi E the Examiner of Trade-Marks refusing 

. ls'"Dr. Pepper" as a trade-mark for 

t I luthorityofthedecsions^^ 

: C , i C85 0. G„ 1907) gdj* 

,,„,, rrat«ft,U00O.G.,2383.) tlU ** 






Copy. 



United States Patent Office 




ITo. 72636 Paper No. 8 
Commr's. Decision. 

Recorded vol.82 Page 119, 



Ex parte Y/alter H. Draper Company. 



Trade-Mark for Oils and Lubricants. 

Appeal. 



Application filed February 11, 1905, No. 72,636 



/S A 



Mr. H. A. Cushing for appellant. 



This is an appeal from the decision of the examiner of 

trade-marks refusing to register a mark which is described as 

follows : 

"The trade-mark consists of two concentric circles 
(the outer circle formed by a single line, and the inner 
circle formed by a double line), the inner of which cir- 
cles is approximately three-fourths of the distance from 
the common centre to the outer circle; between such cir- 
cles are the words *A Guarantee against Hot Bearings, 1 
and within the inner circle are the words 'Viscolene Lu- 
bricants. ' " 

It is clear that the words "A guarantee against hot 
bearings" and "Lubricants" are descriptive words, which under 
the well-settled practice of this office cannot be included in 
registered trade-marks. Ex parte Star Lotion Remedy Co., 100,0.G., 
2306. The examiner has required the elimination of these words, 
jtfid his action is clearly right. 

The word "Viscolene" is the distinguishing feature of the 



_ ^ -? / a J-> 




applicant's mark, and it might properly be registered as a trade-mark 

if it did not closely resemble prior registered marks. 

The examiner states that this word is not registrable in 

view of the following prior registrations: 

Seneca Oil Works, No. 24,604, April 24,1394; 

Borne Scrymser Company, No. 39,245, November 11,1902; 

Vacuum Oil Company, No. 32,900, May 16, 1899. 

so 

These prior registrations include the words "Viscolene" , 

"Viscosine" and "Viscolite", and it is very clear that the word 
"Viscolene" so nearly resembles these prior marks "as to be likely 
to cause confusion or mistake in the mind of the public or to 
decieve purchasers." 

The decision of the examiner of trade-marks, refusing 
registration, is affirmed. 



F. I. Allen 

Commissioner. 



March 30, 1905, 



January 17,1905. 



Copy. k.h. 



No. 70, 521. Paper No. 

Commr's Decision. 
Recorded Vol. 82 Page 120, 




United States Patent Office. 



Ex parte Societe Ananyme de la Grande Distillerie 
E. Cusehier Eils Aine & Cie. 



Trade-Mark for Absinthe. 



Appeal. 
Application filed April 1,1904; No. 70,521 

Mr. William H. Blymyer for appellant. 



This is an appeal from the decision of the examiner of 

trade-marks, refusing to register a trade-mark for a"bsinthe, which 

is described as follows: 

"As shown in the accompanying facsimile, the trade-mark 
consists of the words 'Oxygenee Cusenier 1 ; representations 
of a branch of the artemisia plant, crossed by a band and 
also by a crown, and of three medallions bearing araorial 
designs anfi arranged in the form of an inverted pyramid." 

The examiner says: 

"The drawing shows other features which are not described 
as a part of the trade -mark, and which, manifestly, can 
form no part thereof and which obviously should be omitted 
from the showing of the mark, inasmuch as they are de- 
scriptive of the goods, of the applicant, and of the place 
of doing business,, and, therefore, not properly presented 
in a trade-mark application." 

The examiner says that these features should be removed 

from the drawing and that the word "Cusenier" should be eliminated 



/<?: 

















for the reason that it is an ordinary surname. 

There are many decisions of this office to the effect that 
only the arbitrary features of a mark can he registered under 
the act of 1881 and that other features should not appear in the 
mark presented for registration. Ex parte Van Horn and Sawtell, 
109 O.G., 1069; ex parte Star Lotion Remedy Co., 100 0. G., 2603; 
ex parte P. P. May & Co., Ill 0. G., 2223. The examiner was 
therefore right in requiring that the mark he limited to the arbi- 
trary features. 

The appellant contends that the refusal of registration in 
this case is a violation of his rights under the International 
Convention for the Protection of Industrial Property. This con- 
tention, however, cannot he sustained, since it is believed that 
the convention confers no greater privileges upon foreigners than 
are given to citizens of this country. Ex parte Bishop, 107 0. G., 
1973. 

The law as passed by Congress does not permit the regis- 
tration by foreigners of marks which would not be registrable to 
citizens of this country, and this office should not register 
marks unless authority therefor is found in the statutes. See 
Opinion of Attorney General, 47 0. G., 398. 

The decision of the examiner of trade-marks is affirmed. 

P. I. Allen 

Commissioner. 
March 30,1905. 






/^^ 



April 27, 1905. 



in the matter of the 

Application of 

The Dr. Pepper Co. , 

Trade-Mark; 
Filed Jan 14, 1905, 
No. 72,441. 



Petition for Rehear ing. 



Sir: 

You are hereby informed that the decision of the 
Commissioner on the above petition is as follows: 

This application for the registration of a trade-mark 
was filed under the provisions of the trade-mark act of 1881. 
This law was superseded by the new trade-mark lav; which went 
into effect April 1, 1905. The jurisdiction of the commis- 
sioner to render a decision upon an appeal from the action of 
the examiner of trade-marks in this case therefore expired on 
March 31, 1905. For this reason the applicant's appeal was 
considered and disposed of on that date. 

The motion for rehearing is denied. 

F. I. Allen 

Commissioner. 



/) 



7 









//^.^r>ff 



DECISIONS OF THE H. S. COURTS. 




Supreme Court of the United States, 

3, v. d'uMHwni' 1886 and Fay-Sholes Company 

,-. Wii -KOFI-, Seamans & Benedict. 

n,. idedApril :",, 1906. 

i. Trade-Marks -■• Remington "— a Bem - Sho"— Injunction 

ItEFI 

Hill of complaint praying an injunction restraining the defend- 
ant tn.in using the words" Remtagton-Sholes" and " Rem-Slio " 
jaleof typc-writersinvio-B of the complainant's prior use 
of ami riglil to the words " Remington Standard Typewriter" 
hi the same business dismissed. Lower court reversed. 
2 Sami Surname Not a Trade-Mark— Bight to Use Name. 
It is well settled that a personal name cannot be exclusively 
appropriated by any one as against others having a right to use 
it.and as the name " Remington" is an ordinary surnajne it was 
manifestly incapable ot exclusive appropriation as a valid trade- 
mark, and its registration as such could not in itself give it va- 
lidity 
:t. Same— Family Name -Use Not Restrained. 

i ... i urts will not interfere to restrain the use of a family 
name where tie- only confusion, if any. results from asimilaril 
Of the names and not from the manner of its use. 
I. Same Same Name of Corporation. 

In t he absence of contract, fraud, orestoppelany man may use , 
his own name ill all legitimate ways ami as a whole orapart of a | 

corporate name. 

.-,. Same -Same— Corporation Not Restrained— Showing of 
Fraud Necessary. 
One corporation isnot entitled to restrain another from using 
in itscorporatetitleamtine to which others haveacominon right. 

,i whether the use of the name was necessary is not 
t he t est -.. 1 nit thi' quest ion is whether it s use is reasonable .and hon- 
est or is calculated to deceive. 
i',. Same -" Kemington-Sholes "^Reasonable Use of Name— 
Acsence of Fraud. 
f/w./that the Remingtons and Sholes marlea reasonable and 
fairuseof their namesin adopting the name" Remington-Sholes" 
for their type-writer and in giving that name to the corporation 
■., id furits manufacture and sale. Ucld, further, thatthefact 
lh.it they desired to a vail themselves of the general family repu- 
tation attache. i to the t nrti names docs not in itself justify the 
assumption that their purpose was to confuse their machines 
with complainant's or that thcuseof that name was in itself cal- 
culated to deceive. 

On writ and cross-writ of certiorari to the United States 
Circuit Court of Appeals for tlie Second Circuit. 
statement of the case. 

This was a bill exhibited, in September, 1898, by Wyck- 
off, Seamans & Benedict, a corporation of New York, m 
the Circuit Court of the United States for the District of 
Vermont, against the Howe Scale Company of 1886, a cor- 
poration of Vermont, alleging that complainant had been 
for many years engaged in the manufacture and sale of 
type-writing machines known in the markets and to the 
trade and public, and referred to, identified, off ered for sale 
and sold as the " Ramingl mi tvpew liter,'' and the" Reming- 
ton standard typewriter," and that the words "Reming- 
ton" and "Remington standard" Imd been registered in 
the Patent Office under the acl of Congress; and charging 
defendant with fraud and unfair competition in making 
use of the corporate name "Remington-Sholes Company" 
and the designations "Remington-Sholes," "Rem-Sho" 
ami " Kemington-Sholes Company," in advertising for sale 

No. 1.1 




offering for sale and selling type-writing machines and pray 
tag for tin accounting, and for an injunction rest ■ t.ung dc 
feuda.it from advertising or offering for sale or selling Mhra* 
v i ^ ^nacl,u,esnia,iufaeturedbythe"Remmgon-Shol^ 
CompLy/' bearing Che name "Remington" or "Remm- 
tSSes" or "Rem-Sho" or "Remington-Sholes C.mi- 
Zv ' ami from advertising or offering, for sale or selling 
L/sucb machines under said designation, or under ay 
designation of which the name "Remington" was apart 
Defendant was the sales agent of the " Rernington-Sholes 
Company," a corporation of Illinois and was en^d 
selline; tie type-writing machines called the Remington 
S leS" or ^lem-Sho" typewriter, wind, were .manufac- 
tured by the Illinois corporation at Chicago. The light to 
use thole designations in the way they were used was as- 
serted by the* defense, of which the Remington-Sholes 
Company, and subsequently the Fay-Sholes Company had 
charge The word "Rem-Sho" was alleged to have been 
registered in the Patent Office as a trade-mark. 

The circuit court found that defendant's use of the 
name "Remington" was an unjustifiable invasion of com- 
ainant's ri»ht to the use of that name, and entered a de- 
cee August° 14, 1901, denying an account for gams and 
nrofitf without prejudice to the recovery thereof from the 
Rem ngton^holes Company; and perpetuaUy cnjomtng 
the use of the designation "Remington," or "Rem-Sho, 
as the name or part of the name of any type-writing rna- 
chie whatsoever manufactured by the "'Remington-Sholes 
ipany," or by defendant, or any person or concern, and 
from sell ii g, offering or advertising for sale in any manner 
type-writing machines so manufactured ' ' under the name of 
or^Remington^holes' or 'Rem-Sho/ or by any desig- 
nation of which the word ' Remington 'or the . Abreviati on 
' Rem ' shall constitute a part." (110 Fed. Rep., 520.) 

The case was carried by appeal to the .Circuit Court oi 
Appeals for the Second Circuit, and was there heard before 
Circuit Judges Wallace, Lacombe, and Coxe. April 20, 
1903 the decree was reversed, without costs, and the cause 
remanded "with instructions to decree in favor of com- 
plainant only as to the name 'Remington '" Lacombe, J 
delivered an opinion in support ot that decree Coxe J 
concurring in the conclusion because "unable to distinguish 
As cause" from Sogers v. Rogers, (70 Fed. Rep 1017;)" 
Wallace J., dissented, holding that the decree of the cir- 
cuit court should be reversed with instructions to dismiss 
the bill. (122 Fed. Rep., 348.) . 

It appeared that the mandate of the circuit court of 
appeal was issued April 22, 1903, and that the circuit 
S entered a final decree, June 22, 1903, enjoining the 
use of the word "Remington," and also that after the origi- 
nal decree of the circuit court the Remington-Sholes Com- 
pany changed its corporate name to that ot Fay-Sholes 
Company, and ceased to make its machines marked with 
the registered trade-mark "Rem-Sho," and with the in- 
scription " Remington-Sholes Company, Mgrs Chicago. 

It also appeared that in October, 1901, complainant hied 
its bill in the Circuit Court of the United States for flic 
Northern District of Illinois against the Remington-Sholes 
Company, for alleged unfair trade competition, and that, 
after answer filed, an order was entered staying proceed- 
ings until the determination of this cause, and providing 
that if this cause resulted in favor of complainant, that 
cause should be sent at once to an accounting. 

On petition of the Howe Scale Company of 188b, and the 
Fay-Sholes Company, filed October 22, 1903, and on peti- 
tion of Wyckoff, Seamans & Benedict, filed December 21 , 
1903 writ and cross-writ of certiorari were granted. 

For some years prior to I860 E. Remington and his three 
sons were engaged at Dion, New York, in the manufnet lire 
of firearms under the linn-name of E. Rernington & Sons. 
The father died in 1863. and in 1865 the sons, who had con- 
tinued the business, organized the corporation E. Reinmg- 
ton & Sons under the laws of New York. About 1866 B. 
Remington& Sons produced a breech-loading rifle thai ob- 
tained great vogue throughout the world, and was and is 
known as "Tim Remington Rifle." The' Remington Sew- 
ing Machine" and other machines were also manufactured 
and sold. ; , 

In 1873 E Remington <fi Sons began the manufacture ol 

[Vol. 116. 



a type-writing machine, the most important features of 
which were invented and patented by Christopher Latham 
Sholes. It was the pioneer writing-machine and called 
"The Typewriter," and "The Sholes and Glidden Type- 
writer," and in 1880 the names 'Remington" and "Rem- 
ington Standard" were used instead, as they have since 
been continuously. 

One of complainant's witnesses testified that the type- 
writer was called "Remington" "for the reason that the 
name Remington was known the world over, owing to 
their building guns for foreign governments, building sew- 
ing-machines, and having one of the largest manufacturing 
works in the world." In March, 1SS6, the type-writer 
branch of the business of E. Remington & Sons was sold to 
Messrs. Wyckoff, Seamans & Benedict, and there was also 
transferred the exclusive right to the name "Standard 
Remington Typewriter," by which name the assignment 
states the machines were generally known. The assign- 
ment contained the express reservation to E. Remington 
I & Sons of the right to engage in the manufacture and sale 
i of type-writers at any time after ten years from its date. 

Complainant's type-writing machines have been for years 
conspicuously marked with the name "Remington" and 
with a large ' ' Red Seal " trade-mark on the paper-table and 
frame; the name and address '"Remington Standard 
Typewriter, manufactured by Wyckoff, Seamans & 
Benedict, Ilion, N. Y., U. S. A.," on the cross-bar in front 
of the keyboard; the words and figures "No. 6 Remington 
Standard Typewriter Xo. 6" on the front of the base, and 
the words "This machine is protected by 67 American and 
foreign patents" on the back. "Remington" and "Rem- 
ington Standard" and the "Red Seal" have all been regis- 
tered by complainant as trade-marks. 

In 1S92 Z. G. Sholes, a son of Christopher Latham Sholes, 
invented a type-writing machine, and early in 1893 the 
Z. G. Sholes Company was organized under the laws of 
Wisconsin for its manufacture, but the stock of the com- 
pany was never issued, and no machine was ever made or 
sold' by it. Later in the year Franklin and Carver Reming- 
ton, sons of Samuel Remington, formerly president of the 
E. Remington & Sons corporation, bought a three-fourths 
interest in Sholes's invention, Sholes retaining one-fourth, 
and a like interest in the stock of the company, paying from 
eight to nine thousand dollars. They entered into a writ- 
ten agreement with Sholes, which provided, among other 
things, that — 

; no farther, other or different business of any kind or nature 
! shall be transacted by said corporation or in its behalf, except 

that the same may be dissolved, in due form of law, as soon as 

practicable hereafter. 

Franklin Remington gave his entire time to the promotion 
of the enterprise, and advanced for expenses from six to 
seven thousand dollars in addition to the original invest- 
ment of eight or nine thousand. The name of the machine 
was subsequently changed by Sholes from "The Z. G. 
Sholes" to "The Remington-Sholes." Thereafter the 
Remingtons and Sholes induced Head and Fay of Chicago 
to furnish funds to manufacture the Remington-Sholes ma- 
chine; and a corporation organized in the spring of 1S94 
for its manufacture was designated the " Remington-Sholes " 
Typewriter Company." This company purchased tools 
1 and machinery, and its type-writing machines were placed 
I on the market in December, 1894. In the fall of 1896 the 
I company had become so deeply indebted that it became 
necessary to take steps to meet its obligations, and at a 
meeting "of the stockholders December 14, 1896, it was re- 
solved that the property and assets be sold at public auc- 
tion, the buyer to have the privilege of using all or any part 
of the company's corporate name. Thereupon Fay pur- 
chased in his own name, but as trustee for himself and 
other stockholders, the whole of the assets of the company, 
together with it-; good-will, the. exclusive right to use its 
Grade-marks, etc., and for some months carried on thebusi- 
, al the factory formerly occupied by the Remington- 
Typewriter Company. The charter of that com- 
pany was surrendered in April, 1897, and the Remington- 
Sholes Company was incorporated under the laws of Illi- 
pois, and purchased all the assets, good-will, trade-marks, 
trade-names, etc., theretofore belonging l" Fay and the 

No. 1.] 



Remington-Sholes Typewriter Company. And the new 
company continued at the same factory and through the 
same instrumentalities to manufacture and sell its type- 
writers. It was stipulated that the common stock of the 
new company "was divided among the stockholders in 
keeping with the amounts of cash actually invested by 
them in the Remington-Sholes Typewriter Comparand 
that the allotment of said common stock to said Franklin 
Remington was in keeping with such plan. , 

The machines made and sold by the Remington-Sholes 
Typewriter Company were plainly marked with the words 
"Remington-Sholesfchicago." ^ter the new company | 
entered on the business the trade-mark ' Rem-Slio was 
adopted, (registered as a trade-mark October 19, 1897) 
and the machines were also marked on the cross-bars with 
the words "Remington-Sholes Company, Mfrs., Chicago 
The Remington-Sholes Typewriter Company widely ad- 
vertised that its machine "was not the Remington Stand- 
ard Typewriter," and the catalogue circulated by the Kem- 
m^tonlholes Company declared: "We state, then em- 
phatically that this company has no c°™ect,on whatever 
with that well-known and excellent machine the Reming- 
ton Standard Typewriter, and caution possible customers 
against confusing the "Rem-Sho' with that machine or 
any other." 

Mr. Austin G. Fox, Mr. Geo. P. Fisher, Jr., Mr. James 
H. Peine, and Mr. Wm. Henry Dennis for Howe Scale 
Company of 1886 et al. 

Mr. Edmund Wetmore, Mr. Henry D. Donnelly, Mr. 
W. W. Dodge, and Mr. Archibald Cox for Wyckoff, Sea- 
mans & Benedict. 
Mr. Chief Justice Fuller delivered the opinion of the 

Court. 

Referring to the Remington-Sholes Company, it was 
unanimously held by the circuit court of appeals: 

We do not find in this voluminous record sufficient evidence 
that defendanthas itself done anything to promote confusion in 
tufnundsTl "the public, except to use the, name "Remington 
on its machines and in its literature. 

Accepting that conclusion, it follows that complainant's 
case must stand or fall on the possession of the exclusive 
right to the use of the name ' ' Remington." 

°But it is well settled that a personal name cannot be ex- 
clusively appropriated by any one as against others having 
a right to use it; and as the name " Remington" is an ordi- 
nary family surname, it was manifestly incapable of exclu- 
sive appropriation as a valid trade-mark, and its registra- 
tion as such could not in itself give it validity. (Brown 
Chemical Company v. Meyer et al, 139 U. S., 540; Singer 
Manufacturing Company v. June Manufacturing Company, 
163 U. S., 169; Elgin National Watch. Company v. Illinois 
Watch Case Company, 179 U.S., 665.) 

The general rule and the restrictions upon it are thus 
stated in Brown Chemical Company v. Meyer. There 
plaintiff had adopted as a trade-mark for its medicine the 
words "Brown's Iron Bitters," and the defendants used 
upon their medicine the words "Brown's Iron Tonic." 
This Court, after commenting upon the descriptive charac- 
ter of the words " Iron Tonic," and confirming the defend- 
ants' right to the use of these, said: 

It is hardlv nccessarv to say that an ordinary surname cannot 
be appropriated as a trade-mark by any one person. as . agamst 
ethers of the same name who are using it for a legitimate purpwa 
ilthou °h ca sea are not wanting of injunctions to restram 1 e use 
cvVn tone's own name, where afraud upon an" her is , 
intended or where hehas assigned or parted mtnnusngni i usom. 

And, after citing numerous authorities, Mr. Justice 
Brown, delivering the opinion, continued: 

These cases obviously apply only, where i the d"**"*™ 
to his own name imitation oftheptontifi a lab els box >, . 
aies and thereby the public are inducted to behei eili.it 

[Vcl. 116. 






thai iproperty franchise be a i-CMorabte, 

honcsl and fair exercise M surli right, lie is no more liable for the 

incidental da " ! intrade, than hewquldbe 

miurv i- operty by tin- smoke issuing 

. iiis neighbor's house by reason 

us upon Ms mi lands. These and similar 

ascs oi damnum ab que injuria. 

.,, , Mfg.'Co. v. June Mfg. Co. (I(i3 U. S., 169) the 
rule is thus laid down by Mr. Justice White: 

\Ki one has the absolute right to use his own name 

honestly in Ins own business, even though ho may thereby mci- 
dcnl illy interfere with and injure the business of another having 
the same name, in such case the moorrrenience or loss to which 
those h i-> i'J" a common right are subjected is damnum absque in- 
juria Inn although he may thus use his name he cannot resort 
to miv artifice, or do any act calculated to mislead tho public as 
to the identity of the business, firm or establishment, or of the 
article produced by them, and thus produce injury to the other 
beyond that which' results from the similarity of name. 

In the present ease, the decree enjoined the use, "in 'any 
manner whatsoever," "of the designation 'Remington' as 
1 the name, or part of the name, of any type-writing machine 
whatsoever manufactured by the Remington-Sboles Com- 
pany, or by defendant or any person or concern, and from 
selling, olfering, exposing or advertising for sale by means 
of signs, show-cards, catalogues, circulars, publications, ad- 
vert isements or by word of mouth, or in any maimer what- 
soever, type-writing machines manufactured by said Rcm- 
ington-Sholes Company or by defendant, or any person or 
concern under the name of or as 'Remington-Sboles,' or by 
any designation of which the word Remington shall consti- 
tute a part." This denies the right to use the personal 
name, rather than aims to correct an abuse of that right, 
and involves the assertion of the proposition that the use of 
a family name 1 >y a corporation stands on a different footing 
from its use by individuals or firms. But if every man has 
the right to use his name reasonably and honestly, in every 
n ay, we cannot perceive any practical distinction between 
the use of the name in a firm and its use in a corporation. 
1 1 is dishonesty in the use that is condemned, whether in a 
partnership or corporate name, and not the use itself. 

Goodyear s India Rulibir Clove Manufacturing Company 
v. Goodyear Rubber Company (12S U. S., 59S) was a suit by 
a corporation of Xcw York against a corporation of Con- 
necticut, to restrain the use in business of the name "Good- 
year's Rubber Manufacturing Company," or any equiva- 
| lent name. It was held that "Goodyear Rubber" de- 
scribed well-known classes of goods produced by the proc- 
ess known as Goodyear's invention; and that such descrip- 
tive names could not be exclusively appropriated. And 
Mr. Justice Field, delivering the opinion, said: 

Names of such articles cannot be adopted as trade-marks, and 

by appropriated to the exclusive right of any one; nor 

incorporation of a company in the name of an article of 

commerce, without other specification, create any exclusive light 

use of the name. 

The principle that one corporation is not entitled to re- 
train another from using in its corporate title a name to 
which oi In is have a common right, is sustained by the dis- 
! mission in Columbia M',/1 Cum puny v. Alcorn, (150 U. S., 
11 'i and is, we think, necessarily applicable to all names 
ltd juris. {American Cereal Company v. Eli PetHjohn 
Cereal < 'ompany, 72 Fed. Rep., 903; 76 Fed. Rep., 372; //</- 
zeltan Boiler Company v. Hazelton Tripod Boiler Company, 
I I.' 111., dill; Monarch v. BosenfeU, 39 S. W. Rop.,236.) 

li is s;iid that the use of the word "Remington" in the 
Dame "Remington-Sholes" was unnecessary, as if neces- 
sity were the absolute test of the right to use. lint a per- 
son is i ml obliged to abandon the use of his name or (o un- 
reasonably restrict if. The question is whether his use is 
reasonable and honest, or is calculated to deceive. 

No. 1.1 




It is a question of evidence in each case whether there is false 
represent at ion or not. (Burgess v. Buracss,3 De G. M. AG.,S96.) 

The circuit court of appeals in the present case quotes 

with approval from the concurring opinion of Wallace, J., 

in B. W. Rogers Company v. William Rogers Man. Co., (70 

Fod. Rep., 1019,) that— 

a body of associates who organize a corporation for manufactur- 
ing and selling a particular product are not lawfully entitled to 
employ as their corpora tename in that business the nameof one of 
their number when it appears that such name has been intention- 
ally selected in order to compete with an established concern of 
the same name, engaged in similar business, and divert the latter* s 
trade to themselves by confusing the identity of the products of 
both, and leading purchasers to buy those of one for those of the 
other. * * * The corporators chose the name unnecessarily, 
and having done so for the purpose of unfair competition, cannot 
be permitted to use it to the injury of the complainant. 

This, of course, assumes not only that the name selected 
was calculated to deceive, but that the selection was made 
for that purpose. 

In Turton and Sons v. Tuiion and Sons, (42 Ch. Div., 
128,) plaintiffs had carried on the iron business as "Thomas 
Turton and Sons." Defendant began the same business as 
John Turton, then traded as John Turton and Co., and 
finally took in his sons and changed the firm-name to "John 
Turton and Sons." .Some confusion had arisen, and plain- 
tiffs contended that there was no necessity for defendants 
to use their own names. 

Lord Esher said: 

Therefore the proposition goes to this length: That if a man 
is in business and has so carried on his business that his name has 
become a value in the market, another man must not use his own 
name. If that other man comes and carries on business he must 
discard Ins own name and take a false one. The proposition seems 
to me so monstrous that the statement of it carries its own refu- 
tation. 

And Lord Macnaghten said in Reddaway v. Banham, 

(L. R. Appeal Cases, 1896, p. 220:) 

I am qirite at a loss to know why Turton v. Turton w r as ever re- 
ported. The plaintiff's case there was extravagant and absurd. 

And see Meneely v. Meneely, (62 N. Y., 427;) Meriden 
Co. v. Parlcer, (39 Conn., 450.) 

In our opinion the Remingtons and Sholes made a rea- 
sonable and fair use of their names in adopting the name 
" Remington-Sholes " for their machine, and in giving that 
name to the corporation formed for its manufacture and 
sale. 

The formation of a corporation as an effective form of 

business enterprise was not only reasonable in itself, but 

the usual means in the obtaining of needed capital. And 

as Wallace, J., said: 

It was natural that those who had invented the machine, and 
given all their time and means in introducing it to the public, when 
they came to organize the corporation which was to represent 
the culmination of their hopes and efforts, should choose their own 
name as the corporate name. In doing so I think they were exer- 
cising only the common privilege that every man has to use his 
own name in liis own business, provided it is not chosen as a, cover 
for unfair competition. They did not choose the complainant's 
name literally, or so closely that those, using ordinary discrimi- 
nation would confuse the identity of the two names, and that 
differentiation is sufficient to relieve them of any imputation of 
fraud. 

The name "Remington-Sholes Company " is not iden- 
tical with, or an imitation of, " Remington Standard Typc- 
wrifer Company," or "Remington Typewriter Company," 
or " E. Remington and Sons." Defendant's marks " Rom- 
Sho," "Remington-Sholes Co., Mgrs., Chicago," are not 

[Vol. 116. 



identical with or an imitation of complainant's marks 
"Remington;" Large Red Seal; "Remington Standard 
Typewriter, manufactured by Wyckoff, Seamans & 
Benedict, Uion, N. Y., U. S. A.;" "Remington Standard 
Typewriter." 

The use of two distinct surnames clearly differentiated 
the machines of defendant from those of complainant, and 
when defendant's cards, signs, catalogues, instructions to 
agents, etc., are considered, it seems to us that the record 
discloses, to use the language of Mr. Justice Field in the 
Goodyear case, a persistent effort on defendant's part "to 
call the attention of the public to its own manufactured 
goods, and the places where they are to be had, and that it 
has no connection with the plaintiff." Doubtless the 
Remingtons and Sholes, in using the name "Remington- 
Sholes," desired to avail themselves of the general family 
reputation attached to the two names, but that does not in 
itself justify the assumption that their purpose was to con- 
fuse their machines with complainant's; or that the use of 
that name was in itself calculated to deceive. Remington 
and Sholes were interested in the old company, and Rem- 
ington continued as general manager of the new company. 
Neither of them was paid for the use of his name, and nei- 
ther of them had parted with the right to that use. Hav- 
ing the right to that use, courts will not interfere where the 
only confusion, if any, results from a similarity of the 
names and not from the manner of the use. The essence 
of the wrong in unfair competition consists in the sale of 
the goods of one manufacturer or vender for those of an- 
other, and if defendant so conducts its business as not to 
palm off its goods as those of complainant, the action fails. 

As observed by Mr. Justice Strong in the leading case 
of Canal Company v. Clark, (13 Wall., 311:) 

Purchasers may be mistaken, but they are not deceived by false 
representations, and equity will not enjoin against telling the 
truth. 

And by Mr. Justice Clifford, in McLean v. Fleming, 
(96 U. S., 245:) 

A court of equity will not interfere when ordinary attention by 
the purchaser of an article will enable him at once to discriminate . 
the one from the other. 

And by Mr. Justice Jackson in Columbia Mill Company 

v. Alcorn, (150 U. S., 460:) 

Even in the case of a valid trade-mark the similarity of brands 
must be such as to mislead the ordinary observer. 

And see Coats v. Memch Thread Company ,) 149 TJ. S., 
562;) Liggett Tobacco Company v. Finzer, (128 U. S., 182.) 

We hold that, in the absence of contract, fraud or es- 
toppel, any man may use his own name, in all legitimate 
ways, and as the whole or a part of a corporate name. 
And, in our view, defendant's name and trade-mark were 
not intended or hkely to deceive, and there was notliing 
of substance shown in defendant's conduct in their use 
constituting unfair competition, or calling for the imposi- 
tion of restrictions lest actionable injury might result, as 
may confessedly be done in a proper case. 

Decree of circuit court of appeals reversed; decree of cir- 
cuit court also reversed, and cause remanded to that court 
with a direction to dismiss the bill. 

No. 1.) 



X 






COMMISSIONER'S DECISIONS. 
Graham Bros. & Cd/v. Norddeutsche Wollkammerei 

AND KAMMGARNSPINNEREI. i a ,. 
Decided May 29, 1905 
Teade-Marks— Interference— Applications Under Act oe 
1881— Amendment Under Act February 20. 
Where an intcrfercncelwas'declared between trade-mark ap- 
plications filed|under the aefof 1881. Held that the applieaticni 
should bc|amendcd to bring them under the act of February 20, 
1905, before the interference can be proceeded with. 

On appeal. 



TRADE-MARK FOR COSMETICS. '"''■' "•-"'-'I 

Application of Graham Bros. & Co. Application of 
Norddeutsche Wollkammerei and Kammgarnspinnerei. 

Mr. H. 67. Underwood for Graham Bros. & Co". 

Messrs. Georgii & Massie for Norddeutsche Wollkam- 
merei and.Kamnigarnspinnerei. , ^ 
[_ Allen, Commissioner: 

This is an appeal by Norddeutsche Wollkammerei and 
Kammgarnspinnerei from the decision of the Examiner of 
Trade-Marks adjudging that Graham Bros. & Co. were the 
'first to adopt and use the trade-mark in issue. 

It appears that both applications involved were filed un- 
der the Trade-Mark Act of 1881, and since that act was re- 
pealed on February 20, 1905, and a new trade-mark law 
was passed to take effect April 1 it is apparent that regis- 
tration must be made under the latter act. The law of 
February 20, 1905, (sec. 24,) permits the amendment of ap- 
plications previously filed to bring them under it's provi- 
sions;- but it appears that no such amendment lias been 
filed in either of the cases involved in this interference. If 
the parties intend to amend under section 24 to bring their 
cases under the new law, they should do so promptly, since 
action in this interference should not be suspended indefi- 
nitely. 

The parties should within fifteen days amend their re- 
spective applications to bring them within the act of Feb- 
ruary 20, 1905. Unless such amendments fire filed at the 
expiration of the period named an order will be entered 
dissolving this interference. . /'. AA _ _.. 



I 



COMMISSIONER'S DECISIONS, 




Sgl^gC Ex parte Mark Cross Company, 

""TV^*- Decided May 17, 1905. 

J.TTrADE-MARKS-APPEAL-REFUSAL TO PERMIT AMENDMENT- 
ACT February 20, 1905. 
Where the Examiner of .Trade-Marks refuses to permit the, 
amendment of an application filed under the law of 1S81 to bring . 
it under the act of February 20, 1905, Held that his decision is not 
appealableundertheactof 1905, since the application must be con- 
sidered and decided under the act before an appeal can be taken 
under it. 

2. Same- Amendment Under Act February 20. ~ W " "* '" 

The permission of an amendment of ,fih application under the . 
old trade-mark law to bring it under the new law is a condition , 
precedent to a consideration of and decision ,»pon the case under ; 
the new law. ■> u 

3. Same- Act February 20, 1905-' 'Pending" Application- 

right OF AMENDMENT; '.:'• 

A trade-mark application under the law of 1881 in which regis- 
tration had been finally refused before the passage of the actof 
February 20, 1905, cannot be Regarded- as "pending" at that 
date, and therefore cannot be amended to bring it under that 
act, 

4. Same-Same-Same-" Pending" Does Not Include Re- 

jected Cases. • ' - > 

The word "pending" in section 24 of the act of February 20, 
1905, means undecided and does'not include tiro* cases in which 
an adjudication has been made which Es final aad calls for no 
amendment or other action. 

5. Same-Same-Same-" Pending " Given Ordinary Meaning- 

Guess as to Intent of Congress. 
The word "pending" In section 24 of the act of February 20, 
1905, must be given its natural and ordinary meaning, since , 
there is notliing to show a different intent by Congress, and its 
meaning cannot be varied because of any mere guess as to a dif- 
ferent intent. 







ty* 








6. Same— End or Prosecution of Applications— Final De- 

cision. 
There must be an end some time to the prosecution before 
this Office of trade-mark applications, and that end is reached 
when a final decision in the case is made. 

7. Same— Same— Same— Right of Rehearing. 

The fact that it was possible to grant a rehearing in a case 
finally disposed of does not take it out of the class of adjudicated 
cases and into the class of pending cases. 

8. Same— Time Limit for Action on Applications— Prosecu- 

tion Ended. 
The fact that the act of. tSSl contained no time limit for action 
upon trade-mark applications furnishes no basis lor the conclu- 
sion that all applications untkr thai; act are pending and that 
none of them has been finally disposed pf and ended. ' 

9. Same— Same— Final Action £loses Case. 

The absence of a time limit foi action in the statute docs not 
mean that applications are' to" be regarded as 'pending in- 
definitely, but makes it necessary to look to something else to 
determine when the prosecution is ended. A finaf decision al-' 
lowing or refusing registration ends the prosecution." '"" 
On appeal. 

trade-mark for harness, etc. 
Mr. Walter F. Wood and Messrs. siurtcvant. c& Greeley ■ 
for the applicant. 
Allen, Commissioner: 

This applicant has filed what purports to be an appeal 
from the action of the Examiner of Trade-Marks refusing ■ 
to permit an amendment of the above-entitled application . 
with the purpose of bringing it under the provisions of the 
Trade-Mark Act of February 20, 1905. 

This application was filed under the act of March 3, 18S1 , 
and registration was refused by the Examiner of Trade- 
Marks. That decision refusing registration was affirmed 
on appeal on January 2, 1903. 

On February 20, 1905, the present act relating to the reg- 
istration of trade-marks superseded all prior acts relating 
to the subject, and section 14 thereof contains the follow- 
ing provision: 

t) Jl! o! an , a BP Ii<!ation '<>' registration of a trade-mark pending at 

Ut^tinn h. iY P "/ i ii ' g( ' "' t,ns , act ' and on whiph certificate of rcg- 
istiation shall not have lS sued at such date, may, at the option of 
the applicant, be proceeded with and registered under the pro- 
visions of this act without the payment o: further fee. 

Section 24 is as follows: 

n,,!™.' "•" a PP h ™tinns 'or registration pending in the Office of the 
Commissioner of Patents at the time of the passage of tins act 
iSJ? amended with a view to bringing thorn , and the cer iffcato 
in ™ «? on S ,^ ch a F> lic - i '«™s, underlie: prqvis ong, and ihVS? 

™»ton S oVAta a a c P t P UOnS maj ' * P ™ c ^ ed *■» undcr ^ l^- 
Under these clauses the present applicant sought to 
amend his present application on April 20, 1905, to bring 
it under the provisions of the act and said, "Reconsidera- 
tion is requested." The Examiner refused to permit the 
amendment and refused to consider the question whether 
the alleged trade-mark is registrable under the act of Feb- 
ruary 20, 1905. He held that this was not a pending cas e 
and that therefore the applicant was not entitled to amend 
It to bring it under the provisions of the new trade-mark 
law. 

The sole question presented by this appeal is whether the 
apphcanl is entitled to amend the case under the provisions 
of the statute above quoted. This is more in the nature 
of a petition that the Examiner be directed to enter the 
amendment and consider the case on its merits than an ap- 
peal from a decision rendered. There has been no decision 
upon the question whether the mark which was presented 
in this application would be registrable under the act of 
February 20, 1905, to the party who filed this application. 
The permission of the amendment seems to be a condition 
precedent to a ponsideration of and decision upon the ease 
under the new | ftw . Since the Examiner has refused to 
permit the amendment and has refused to deride the case 
under the acl of February 20. an appeal under thai a, I 
does not seem to be the proper remedy. The case must |,e 
decided under the new law before (here can be an appeal 
under that law. 

Xoi withstanding the irregularity in the appeal, the ques- 
tion whether the Examinerwaj right in refu ing to permit 
the amendment to bring the case under the new law will be 
considered. 



As above indicated, .in > laimed right of amendment de- 
pends upon the que. (ion whether this case was pending on 
April 1, 1905, when the new law went into effect. 

In the Century Dictionary it is said: 

When used of an action <a 'mi properly indicates the period 
before final judg t. So ■ on I . ':.. used vo in- 

clude thetim wine! may I satisfied. 

In Stwii/'s Judicial Dictionary (vol. 3, p. 1445) it is r..;id: 
A legal proceeding : ^ "pending " as booh as commenced and until 
it is concluded, i. c, so long as the t .;. I ha\ ii;g original cogni- 
zance of it can make an order on the mat fcers in issue, or to be dealt 
with therein. 

In American and English Encyclopedia of Laic (vol. 22, 

p. 655) it is said: 

" Pending " is defined to mean depending; remaining undecided. 
As the term "pending" means nothing more than "undecided," 
an action is considered as pending from its commencement by 
service upon the defendant, . . .. . 



It is undoubtedly true that final judgment was entered 
in this case long before the law of February 20, 1905, was 
passed. Such judgment was entered by the Examiner of 
Trade-Marks and was affirmed by me on January 2, 1903, 
as the final judgment in this case. Neither the decision nor 
the act of 1SS1, which w 7 as in force until April 1, 1905, nor 
the Rules of Practice of this Office gave the applicant au- 
thority to amend or take further action of any kind in the 
case. The case was therefore to all intents and purposes 
dead. S 

; It is true, as pointed out by the applicant , that the Trade- 
Mark Act of 18S1 did not fix a time limit for action upon 
trade-mark applications and in that respect differs from the 
Patent Act (sec. 4894 of the Revised Statutes;) but it 
does not follow that such applications are to be regarded as 
pending indefinitely. The fact that no time limit for ac- 
tion is fixed makes it necessary to look to something else to 
determine when the prosecution is ended and the case ceases 
to be pending. It is obvious that there must be an end to 
the proceedings upon such applications, as well as upon any 
legal proceedings. That end is reached when the applica- 
tion is allowed or refused registration, since no other action 
is provided for by statute. The patent statutes provided 
for certain acts in prosecution of patent applications and 
fixed the time for such acts. The Trade-Mark Act of 1881 
provided for no action save allowance or refusal, and there- 
fore fixed no time for action. When the case was allowed 
or refused, the proceedings were ended, and .there was noth- 
ing upon which a time limit could take hold. ' 

The applicant here says that he could have asked for a 
rehearing before me after the decision'of January 2, 1903, 
and in view of that alleged tight contends that the. case was 
still pending, notwithstanding the final unappealable deci- 
sion in the case. While it may be that the applicant could 
have filed a petitionfor rehearing if he had done so with dili- 
gence, he did not, in fact, file such petition ; but, on the con- 
trary, the case stood under the final unappealable rejection 
until the. law under which it was filed went out of existence. 
The. applicant was not entitled as a matter of right to a re- 
hearing and did not even ask for it, and therefore there was 
clearly nothing to revive the case and change itfinto a pend- 
ing case after the final decision refusing registration. ;J 

The Supreme Court said in Boemer v. Bernheim, (132 
U. S., 103:) 

After the case had been heard and decided upon its merits, the 
plaintiff could not file a disclaimer in court, or introduce new evi- 
dence upon that or any other subject, except at a rehearing grant- 
ed by the court, upon such terras as it thought fit to impose. The 
gran ting or refusal, absolute orconditionai, of a rehearing in equity, 
as of a new trial at law, rests in the discretion of the court in which 
the case has been heard or tried, and is not a subject of appeal. 

Even if it could be held that the applicant was entitled 
to revive the case by a petition for rehearing, it 'is very 
clear that he should have taken that action' before the 
law under which it was filed expired. Ample notice was 
given of the date when the law would expire, and since 
the applicant permitted this case to remain as one finally 
settled until after the expiration of that time it is now too 
late to revive it for the purpose of bringing it under the 
new law. 



It is noted that in connection with his proposed amend- 
ment thejapplicant asks for Reconsideration; but it is clear 
that he does not really wish reconsideration of the ques- 
tions previously decided. Those questions related to the 
applicant's rights under the old law of 1SS1, which has 
been repealed, and in no way bore upon the rights acquired 
under the new law. The purpose of the proposed amend- 
ment is undoubtedly to secure an adjudication upon a 
matter never before considered and- decided in the case. 
In other words, it is asked that the old adjudication be 
entirely set aside and that a new trial be granted under 
the new law involving entirely new considerations. 

Could it have been the intention of Congress in the 
above-quoted provisions of the act to set aside and nullify 
all adjudications in trade-mark cases for the past twenty- 
four years? I think not. Judging the intention by the 
words of the act, it seems clear that such was not the in- 
tention, since the right of amendment was specifically 
confined to cases which were pending at the time of the 
passage oi the act. In limiting the right to cases pend- 
ing at a particular time Congress said by implication that 
there are oases which are not pending. If the applicant's 
contention^ was sustained, it would follow that all cases 
filed since; the passage of the act of 18S1 are pending, and 
that word as used in the statute would have no significance. 
It is not to be presumed) tiiat this word of limitation was 
used without intentiqn qr effect. It is a well-settled rule 
of construction that the ?fords of a statute must be given 
effect where possihle. Aside from the limitation to pend- 
ing cases Congress expressly provided that the prosecu- 
tion of such cases "may be proceeded with" under the 
new law. To proceed with the prosecution is to go for- 
ward, and not to go back to the beginning and commence 
anew the prosecution of a case which has been proceeded 
with to a conclusion. 

In the case of Cropper et al. v. Smith et al. (vol. I, 
English Reports of Patent Cases, p. 254) Mr. Justice 
Chitty had before A him the question whether a patentee 
could amend his patent by disclaimer after judgment in 
a suit on the patent and while the case was before a 
higher court on appeal. The law permitted such amend- 
ment while action was pending. The court said : 

* * * the result is, that "pending action "means an action be- 
fore judgment; because, if the amendment takes place after judg- 
ment, it is quite clear that it cannot be made use of, or it is not 
available, for any purpose of the action. 

If the amendment were permitted, a new trial was the 
only way of giving it effect, and therefore the court was 
of opinion that the law did not apply. The reasoning 
seems to be directly applicable to the present law relating 
to pending trade-mark applications. Cases in which reg^ 
istration has been refused are not pending, since they have 
been adjudicated and ended. 

In Larkin v. Saffarans (15 Fed. Rep., 147) the circuit 
court said that Congress had authority to make a law ap- 
plying to pending suits, and it was held to apply to the 
particular suit under consideration; but it was said, fur- 
ther: 

If the defendants had made a motion to dismiss, and this case 
had been bv judgment dismissed before Congress had passed the 
new act, or if the court had refused to dismiss for want of jurisdic- 
tion and rendered a judgment against the defendants which was 
void for want of jurisdiction, the case would have been different; 
and this distinction will be found running through the eases and is 
reasonable, because then the matter is ended by judgment, there 
is no pending suit on which to act, as it is past and gone from the 
court, ._ _.*, ■ 



IhenhVjratiunnn behalf of tjc :,ppli,,,„| ,!,,-,, yil 

have asked for a rehearing under the act of 1881 is without 
force, since it had no right to demand a rehearing. Neither 
the statutes nor the rules of this Office provided for such 
rehearing. This Office would have been justified in refus- 
ing to give further consideration to the applicant's claimed 
right of registration, since the doctrine of res adjudicaia 
applies to proceedings in this Office, as well as to proceed- 
ings in the courts. The court of appeals said in re Bar- 
rett, (87 O.G., 1075:) 

While the rules that govern the finality and conclusiveness of 
adjudications at the common law do not applv in the strict sense 
to administrative or qua si -judicial action in the executive depart- 
™S nt -xi government, yet in administrative action as well as in 
judical proceeding.it is both expedient and necessarv that there 
should be an end of controversy. * * * Especially is this prin- 
ciple amiable to the proceedings of the Patent Office, which are 
so nearly Skin to judicial proceedings as to be most appropriately 
designated-as quasi-judicial." In fact, it is onlv by regarding 
these proceedings as substantially judicial that we 'can' sustain th? 
validity of the legislation which authorizes appeals to this court 
from the decision of the Commissioner of Patents. 

An end, to the proceedings is reached when an adjudica- 
tion iij.made which is final and calls for no amendment or 
other action. 

Muc,h is said by the applicant as to the intention of Con- 
gress,in using the word pending in reference to trade-mark 
applications; but there seems to be nothing from which 
to judge the intention save the words which were used in 
framing the law. We surely cannot base a conclusion as 
to the intent upon a mere guess when that conclusion is 
contrary to the natural and ordinary meaning of the wor<Zs 
used. 

In Alexander v. Worthington (5 Md., 485) it was said: 
We are not at liberty to imagine an intent and bind the letter of 
the act to that intent; much less can we indulge in the license of 
striking out and inserting, and remodeling, with the view of mak- 
ing the letter express an intent which the statute in its native form 
does not evidence. 

In United- States v. Goldenie.rg (16S U. S., 95) the Su- 
preme Court said: 

The primary and general rule of statutory construction is that 
the intent of the law-maker is to be found in the language that he 
has used. He is presumed to know the meaning of words and the 
rules of grammar. The courts have no function of legislation, and 
simply seek to ascertain the. will of the legislator. It is true there 
are cases in which the letter of the statute is not deemed control- 
ling, but the cases are few and exceptional, and only arise where 
there are cogent reasons for believing that the letter does not fully 
and accurately disclose the intent. No mere omission, no mere 
failure to provide for contingencies, which it may seem wise to 
have specifically provided for, justify any judicial addition to the 
language of the statute. 

In the present case it surely is not unreasonable to sup- 
pose that Congress intended the word "pending" to have 
the ordinary meaning and to apply to cases which had 
not been adjudicated. It was to be presumed that there 
would be applications in this Office filed under the act of 
1881 and not disposed of at the time the new law was to 
take effect. It was obviously proper and reasonable to 
preserve the rights of these applicants and provide for an 
adjudication of their cases. The word pending plainly re- 
fers to these cases, and it cannot be applied to adjudicated 
cases without giving it a forced and unnatural construc- 
tion. 

It must be held that the Examiner of Trade-Marks was 
right in refusing to permit the amendment in this case and 
in refusing to consider and decide the case under the act of 
February 20, 1905. 

Since this case is not under the act of February 20, 1905, 
and no decision has been rendered as to the right to regis- 
ter the mark under that act, the present appeal cannot be 
regarded as properly taken under that act. The appeal is 
dismissed. 



//? 










„ OOMMISSIONEE'S " DECISIONS,' 

. Silver Lake Coittas-t v. Samsox Cordage Works.] | 

•~SJSS»~ Decided Mmj ,!». 1905. is 
ffRADE-MARK INTERFERENCE— ISSTJE NOT REGISTRABLE — ACT 

D of 1881— Act of 19 B. 

Where the Examiner granted a motion to dissolve a trade* 
rnark interference on the ground that the mark iii issue was net 
registrable under the act of 1881 and when the question wee 
heard on appeal the act of 1881 hr.d been superseded by the act 
of February 20, 1905, Held that the ease should be returned to the 
Examiner for decision under the act of February 20. ,j^j^,J 

r Appeal on motion. 

-f, ■ TRADE-MARK FOR COED. "v>-^ -1-- — TH 

r ApplicationTof Silver Lake Company. Trade-mark of 
Samson Cordage Works /registered March 27, 1894, No. 
24,411. 

Messrs. Maclcoil, Calver cG Randall for Silver Lake Corn- 
pany. 

Messrs. Clarice & Raymond for Samson Cordage Works. 
Allen, Commissioner: ■ 

This is an appeal by the Silver Lake. Company from the 
decision of the Examiner of Trade-Marks dissolving the 
above-entitled interference on the ground that the subject- 
matter of the issue is not a valid trade-mark and is not reg- 
istrable under the act of 1881. 

The first question which arises on this appeal is one of 
jurisdiction. As above indicated, the Examiner's decision 
was rendered under the Trade-Mark Act of 1881, and since 
the date of that decision the Trade-Mark Act of February 
20, 1905, has superseded all acts relating to the subject. 
The present appeal was taken on February 9, 190,5, b.efore 
the passage of the new law. It was therefore pending at 
the time that the new law took effect. 

Section 24 of the act of February 20, 1905, is as follows: 

Sec 21. That all applications for registration pending in the. 
office of the Commissioner of Patents at the time of the passage 
of this act may be amended with aviewto bringing them, and the 
certificate issued upon such applications, under its provisions, 
and the prosecution of such applications may be proceeded with 
under the provisions of this act. 

In view of this provision of law the Silver Lake Com- 
pany has filed an amendment to its application and has 
thereby brought its application under the new law under 
date of April 17, 1905. The mark of the Samson Cordage 
Company was registered under the act of 1SS1 on March 
27, 1894. 

It is clear that if the right of the Silver Lake Company to 
registration is to be determined on this appeal it must be 
by reference to the aot of February 20, 1905, since registra- 
tion must bo effected, if at all, under that act. The Ex- 
aminer has derided the. question of registrability under the 
act of 1881 ; but in so far as appears he has not decided the 
question as it may be affected by the now law. It may lie. 
that the same considerations will control his decision un- 
der the new law as under the. old; hut the fact remains that 
no decision under the. new law has been rendered. It is 
too late now to review the question whether the mark was 
registrable under the old law, as that is now a moot ques- 
tion, and since this appeal presents no other question for 
review it is necessary to affirm the Examiner's decision or 
dismiss the appeal. 

Since the appellant has amended its application in ac- 
cordance with the act of February 20, 1905, and is now seek- 
ing registration under that act and not the act, of 1SS1 , the 
proper action seems to be to dismiss the appeal and re- 
mand the case to the Examiner for consideration and de- 
cision under the act of February 20, 1905. If upon such 
consideration the Examiner reaches the same conclusion as 
already announced on the question of registrability, an ap- 
peal may be taken in accordance with the provisions of the 
act of February 20, 1905, (Sec 8.) A fee is required for 
such appeal. (Sec. 1 1 and Rule 500 

This appeal is dismissed, and the case i- remanded to the 
Examiner of Trade-Marks for consideration of and deci 
upon the question raised under the act of February 20 
X905. 



' , , COMMISSIONERS DECISIONS, 

//& ch<t. z r*7 





Ex: tarte Boston Foi-xtatx Pen Co, 

Veciaed May-31, i005. f 

Signature of Applicant — Uniformity Requires. 

The signature to the drafting and the statement in a trade-mark 
application should correspond. The question is not whejle.' 
either or both signatures jare legal, but there must beuniforniitv. 

Ox petition. 
^ trade-mark for fountain-pens, 

Messrs. Crosby A- Gregory for the applicant 
Allen, Comm issiorw: 

This is a petition from the action of the Examiner ol 
Trade-Marks requiring that the signatures to the drawing 
and the statement correspond. 

The signature to the statement is "Boston Fountain Pen 
Co.," whereas that to the drawing is •' Boston Fountain 
Pen Company." 

. The petitioner cites many authorities to. the effect that 
"Co." is a well-understood abbreviation of the word ''Com- , 
pany," and cites many others to the effect that such abbre- 
viation of the real name in the signature to a note, deed, or 
other instrument would not render the instrument invalid. 

There has been no contention that the registration, if ! 
granted upon the present application, would be void be- 
cause of the abbreviation of the signature to the statement, / 
and therefore the argument and citation of authorities upon 
the question of validity is without force. It may be said, 
however, that these very authorities show that the question 
has been raised at various times and may be raised again. 
It is one of the functions of this Office to avoid uncertainty 
in instruments issued, and therefore the authorities cited 
justify this Office in requiring uniformity in the name. 
There seems to be no good reason why the name should not 
be the same wherever it appears in the instrument, and it 
is deemed best to have a uniform rule thai it shall. 

The petition is denied. 



// £. frf. z#? ^ 



DECISIONS OF THE U. S. COURTS. 



/A 




^ Court of Appeals of the Dhtrict of Columbia, 

In re Mark Cross Company. 

Decided June IS, 1905. 

1. Trade-Marks— Appeal— Right of Amendment— Act 1905— 

Jurisdiction. 
Where a party filed a trade-mark application under the act of 
1881 and seeks to amend it under section 24 of the act of 1905 to 
bring it under the provisions of the new law, but the Commis- 
sioner decides that he is not entitled to amend to bring the case 
under the new law, Held that the Commissioner has virtually re- 
fused registration, and his decision is appealable. 

2. Same— Same— Amendment Under Act 1905— Practice. 

An amendment seeking to bring an application under the 
Trade-Mark Act of 1905 should be entered, and if it is believed 
that, the application is not one of those which may be brought 
under the new law in accordance with sections 14 and 24 registra- 
tion may be refused. An appeal lies from such refusal. 

3. Same — Act 1905 — Amendment of Pending Cases— Sections 

14 and 24 Construed. 

Sections 14 and 24 of the Trade-Mark Act of 1905, permitting 
the amendment of pending applications to bring them under the 
new law, do not apply to applications in which registration has 
been finally refused. 

4. Same— Same— Meaning of "Pending" Applications— Reg- 

istration Refused by the Commissioner. 
A trade-mark application under the act of 1881 which had 
been rejected by the Examiner and by the Commissioner on ap- 
peal cannot be regarded as "pending," and therefore it cannot 
be brought under the act of 1905 by amendment. 

5. Same— Same— Same — Qualifying Word "Pending." 

The use of the qualifying word "pending" in regard to appli- 
cations which could be amended indicates that Congress did not 
intend that all applications for registration of trade-marks 
which had not been allowed at the time when the act went into 
effect could be further prosecuted under the provisions of that 
act. 

6. Same— Same— Same— Finally-Rejected Cases Not Pend- 

ing. 
By permitting the amendment of "pending" applications: to 
bring them under the new law Congress did not intend to open 
the door to the further prosecution of all applications finally re- 
jected during the last twenty-four years. 

7. Same — Same — Same — Word ' ' Pending " Has Natural 

Meaning. 
The words ' ' pending applications " in sections 14 and 24 of the 
act of 1905 must be given their natural and ordinary meaning, 
since no reason is apparent for giving them a forced construc- 
tion. "Pending" properly indicates the period before final 
judgment. 

8. Same— Same— Same— Rights Preserved Where Not Ex- 

hausted or Forfeited. 
To give to the word "pending" its natural meaning protects 
to the full extent all those who had applications undecided re- 
maining in the Patent Office filed under the act of 1881. It 
saves the rights of all who have not exhausted or forfeited all of 
their rights— all those against whom no final judgment had been 
given. 

9. Same— Same— Same— Act 1881— Registration or Refusal. 

The Trade-Mark Act of 1881 provided for no action upon an ap- 
plication save registration or a refusal of registration, and when 
cither of these was done nothing remained to be done, and the 
application was no longer pending. 

10. Same— Same— Same— Right of Rehearing— Repeal of 

Law. 
An application is not "pending" after refusal by the Com- 
missioner merely because no rehearing had been asked for or 
had. Neither the act of 1881 nor the rules provided for a rehear- 
ing, and of course no rehearing could be had under the act of 
1881 after it was repealed. 



trade-mark for harness, etc. 



Mr. A. P. Greeley for the appellant. 



[Vol. 116. 



Mr. John M. Coil for the Commissioner of Patents. 
Duell, J.: 

This appeal discloses the following stale of facts: On 
January 21, 1902, the appellant filed in the Patent Office 
an application for registration of an alleged trade-mark. 
In the usual course of procedure the Examiner of Trade- 
Marks refused registration and his decision, on appeal lo 
the Commissioner of Patents, was affirmed January 2, 
1903. The act of March 3, 1S81, was then in force and so 
remained until repealed by the act of February 20, 1905, 
which took effect April 1, 1905. Between January 2, 1903. 
and April 1, 1905, no further attempt to prosecute the ap- 
plication was made by the applicant. On April 20, 1905, 
he filed a proposed amendment by which he sought to fur- 
ther prosecute the application in accordance with the pro- 
visions of sections 14 and 24 of the act of 1905. The 
Examiner refused to admit the amendment, basing his re- 
fusal upon the ground that the applicant had no right to 
amend as its application was not a pendiug application as 
the term is used in said sections 14 and 24 of the act of 1905. 
Later on, and in reply to a written argument filed on be- 
half of the applicant in which it was insisted that the ap- 
plication was a pending one, and asking for a reconsidera- 
tion, the Examiner made the argument a part of the rec- 
ord in the application, and again held that the application 
was not pending within the meaning of the act of 1905. 
Thereupon an appeal was taken to the Commissioner of 
Patents in person, who, while holding that relief should be 
sought by petition and that no appeal would properly lie , 
proceeded nevertheless to consider the matter, saying: 

Notwithstanding the irregularity in the appeal, the question 
whether the Examiner was right in refusing to permit the amend- 
ment to bring the ease under the new law will be considered. 

After a full review of the merits, he concluded that the 
application was not pending within the meaaing of the sec- 
tions of the act referred to. While in form he dismisses 
the appeal, he in fact took jurisdiction and in reality de- 
cided the question of the right of applicant to amend. His 
decision is a virtual rejection of the application based upon 
the ground that it was not an application pending at the 
date when the act of 1905 went into effect. (116 O. G., 
1732.) Applicant thereupon took his appeal under sec- 
tion 9 of the act of Februaiy 20, 1905, which provides — 
That if an applicant for registration of a trade-mark * * * 
is dissatisfied with the decision of the Commissioner of Patents, 
lie may appeal to the Court of Appeals of the District of Columbia— 

on complying with certain conditions. 

At the outset it is insisted upon the part of the Patent 
Office that the appeal should be dismissed for lack of-juris- 
diction in this court, for the reason that there has been no 
decision in the Patent Office from which an appeal can be 
taken. This contention is predicated upon the statement 
that the Commissioner of Patents has not acted, but has 
refused to act, and consequently applicant's remedy is not 
by appeal but by mandamus proceedings. 

We consider this objection as technical in the extreme. 
The amendment sought to be incorporated was not an or- 
dinary amendment filed in answer to some action of the 
Examiner of Trade-Marks made in the due prosecution of 
the case. It was a prerequisite to the prosecution of the 
application under and in accordance with of the 

act of 1905, and, stripped of technicalities, the action of 
the Examiner was in effect a rejection of the application 
upon the ground that it was not an application tiled under 
the act of 1881 such as could be further prosecuted. The 
No, 9,] 



/// 



sole and only question to be determined when the amend- 
ment was presented was whether the application was pend- 
BBgini Office on'AprU 4, 1905. The Commis- 

admits this when he says: 
The claimed right o1 amendment depends anon the question 
whether this i a (tog on April I, 1905, when the new law 

went into effect. 

It would be an unnecessary hardship to the appellant, and 
to all applicants similarly situated, for this court to dis- 
miss the appeal upon the ground that appellant's remedy 
was 1a mandamus rather than by appeal, and thereby also 

dela\ a final derision of a question which not only this ap- 
pellant hut the Patent Office should desire to have settled 
at the earliesl possible date It was mainly because we 
understood that such was the wish of both parties to this 
controversy thai .< i consi ml to hear the case now rather 
than have it come up lor hearing next November which 
would have been the regular time for its consideration. 

It is unnecessary to decide whether mandamus proceed- 
ings might have been instituted by this appellant. We 
think that the treatment in the Patent Office of the ques- 
tion whether appellant's application was pending in the 
Patent Office on April 1, 1905, has been such that we have 
jurisdiction of the appeal, and in the interest of a speedy 
determination of the question involved, we should not 
seek to evade it. We do not think that Congress intended 
to abridge the right of applicants for registry of trade- 
marks filed under the act of 1881, to have the question 
whether an application so filed was pending at the time 
when the act of 1905 went into effect, determined by a re- 
fusal to accept an amendment seeking to bring the appli- 
cation under the provisions of the latter act and compel a 
resort to mandamus proceedings. Such an amendment, 
while essential, relates to form and should he received. If 
the Commissioner decides that the application, though 
amended in form, is not one referred to in sections 14 and 
24 of the act of 1905, he may refuse registration and from 
such refusal an appeal lies to .this court. Surely the ques- 
tion whether an application filed under the act of 18S1 and 
remaining in the Patent Office is a "ponding application" 
is as important as many other questions under the act of 
1905 made appealable to this court. It is not to be pre- 
sumed that Congress intended that the decision of the 
Commissioner of Patents on that question should be final. 
The question we are therefore called upon to decide is 
whether an application for registration of a trade-mark 
Bled under the act of 1S81, and which stood at the date 
when the act of 1905 went into effect . rejected by the Com- 
missioner :n i appeal duly taken to him, is a pending ap- 
plication as thai term is employed in sections 14 and 24 of 
the act of February 20, 1905. 

The material part of section 14 is: 

That the following shall be the rates tor trade-mark teeBl 
on tiling each original application tor registration ol a trade- 
mark, ten dol i " application for registration 
ol a trade-mark pending at the date ol passing of this act, and on 
which certificate of registry tion hall not have issued atwch date, 
may, at thi o e applicant, be proceodod with and regis- 
tered under the provisions ol this act without the payment of 
further fee. 

Section 24 reads: 

That .''ii applications for registration pending in the office of the 
Commissioner ol Patents at the time of the passage of this act 
in,, ■, be amended with a view (■■ bringing thi in, and the certificate 

med upon such applications, under its provisions, and the prose- 
i ol such applications may !«■ proceeded with under tl«' pro- 

The use of the qualifying word " pending " indicates that 
Congress did not intend that all applications for registra- 

[Vol. 116. 




tion of trade-marks which had not been allowed at the 
time when the act went into effect could be further prose- 
cuted under the provisions of that act. Then some mean- 
' ing must be given the qualifying word. In the absence of 
any clear intent of Congress to give it a special meaning 
the ordinary meaning should be given it. There is no ne- 
cessity for placing any strained construction upon it. It 
is not necessary to do so to preserve any rights of appli- 
cants, which otherwise would he irrevocably lost. If an 
application for registration filed under the act of l.NSl is 
held not to come within that term the only hardship to the 
applicant is that a new application must be filed and a sec- 
ond fee paid. This of course would be a hardship where an 
applicant had not exhausted all of the rights of amend- 
ment and appeal given by the act of 1881, and the rules 
promulgated by the Commissioner of Patents regulating 
the, procedure. But surely an applicant who has had his 
day in court; who has used every effort and means the law 
gave him to convince the Examiner of Trade-Marks of his 
right to register his alleged trade-mark ; and failing there 
has taken his appeal to the Commissioner resulting in a 
judgment against him, has had all he could reasonably ask 
for the fee paid by him. Under the act of 1881 an appli- 
cant for registration of a trade-mark paid a fee of twenty- 
live dollars on filing his application. No fee was required 
for an appeal to the Commissioner in person. Under the 
act of 1905 the applicant pays a fee of ten dollars upon fil- 
ing his application, and if an appeal is taken by him to the 
Commissioner, he pays an additional fee of fifteen dollars. 
Surely Congress could have no fiscal reason for permitting 
an applicant who has had a complete opportunity to assert 
his right to a registration and has availed himself of it, to 
traverse the same ground without fee. We do not think 
that the qualifying word "pending," as employed in sec- 
tions 14 and 24, is synonymous with the word ' ' remaining. ' ' 
If such meaning is not given it, what applications can be 
excluded and considered as not pending, unless they be 
such as stood finally rejected, after appeal to the Commis- 
sioner of Patents, at the date of the repeal of the act under 
which they were filed? No ordinary definition can be 
given to the term ' ' pending applications " as broad as above 
stated, and there is nothing to indicate that Congress in- 
tended to open the door for the further prosecution of all 
applications finally rejected during the twenty-four years 
the act of 1881 was in force. 

It is insisted by appellant that its application had not 
been finally rejected, and was therefore pending because no 
request for a rehearing had been asked for, or had, after the 
application was rejected on appeal to the Commissioner. 
We find no provision, either in the statute of 1881 or in the 
rules promulgated for carrying out its provisions, provid- 
ing for a rehearing. Undoubtedly appellant, had at some 
time had a right to ask for a rehearing, and in some inst anees 
such applications were doubtless entertained and rehear- 
ings granted in the Patent Office under that act. There 
being no provision for rehearings set out in the statute or 
rules, there of course was no provision stating within what 
time they could be made. Nevertheless we think in the 
absence of any rule such an application should have been 
made within a reasonable time. In the present case more 
than two years elapsed without such application being 
made and meanwhile the act under which the application 
was Bled was repealed. No application for a rehearing 

No. 9.) 






//£- 







/ 



could be made under the act of 1881 after it was repealed, 
and no provision is made by 1 the act of 1905 for a rehearing 
of an application filed under the act of 1881 . Amendments 
of pending applications filed under the act of 1881 are only 
provided for under the act of 1905. No amendment of ap- 
pellant's application could have been received by the Ex- 
aminer of Trade-Marks, had the act of 1881 not been re- 
pealed, in the condition it was after the application was re- 
jected by the Commissioner. The only possible proceed- 
ing was a petition for a rehearing. Had appellant asked 
for a rehearing and had that request been pending or grant- 
ed at the time when the act of 1905 went into effect, this 
appeal would have been presented in'a different light. In 
Larlcin v. Saffaraus (15 F. R., 147) a suit was held to be a 
pending one because no judgment had been entered. The 
court saying: 

If the defendants had made a motion to dismiss, and this case 
had been by judgment dismissed before Congress had passed the 
new act, or if the court had refused to dismiss for want of jurisdic- 
tion and rendered a judgment against the defendants which was 
void for want of jurisdiction, the case would have been different; 
and this distinction will be found running through the eases and 
is reasonable, because then the matter is ended by judgment, 
there is no pending suit on which to act, as it is. past and gone 
from the court. 

t- Neither the preservation of rights, otherwise to be lost, re- 
quires, nor anything in the proceedings of Congress, or of 
any of the committees of Congress having charge of the 
measure, which has been called to our attention, indicates 
that any unusual or strained meaning should be given to 
the qualifying word "pending" as used in the sections of 
the act referred to. We do not think that Congress by any 
provision of the act of 1905 intended to give such an unnat- 
ural and forced meaning to the word "pending" as would 
be necessary in order to consider an application as pending, 
and therefore subject to amendment, when such applica- 
tion could not have been amended under the act of 1881, 
and rules applicable thereto, under which it was filed. The 
ordinary meaning of the word "pending" as used in pro- 
ceedings analogous to the one under review is, we think, 
well defined in the Century Dictionary. This definition is : 

When used of an action pending-$>xo$er\y indicates the period 
before final judgment. Sometimes it is more loosely used to in- 
clude the time which may elapse before such judgment is satisfied. 

It is the natural and proper definition to apply to the 
word as used in the act of 1905. Such meaning given 
to it protects to the full extent all those who had appli- 
cations, undecided, remaining in the Patent Office, filed 
under the act of 1881 . It saves the rights of all who have 
not exhausted or forfeited all of their rights, all those 
against whom no final judgment had been given. 

We have examined the cases cited by appellant and we 
find that when the statutes referred to in the decisions 
are considered, the cases are clearly distinguished from 
the one at bar. 

In U. S. v. Taylor (44 F. R., 2) it was held that a case in 
which a perpetual injunction had been issued was a pending 

[Vol. 116, 



case. Properly so, for there the judgment of the court was 
of such a character that the court might at any time be 
called upon to enforce its judgment by punishing any one 
found guilty of violating the injunction. And further it 
may be said the proceeding for the registration of a trade- 
mark is a very different proceeding from suits over which 
courts for many purposes may, even after judgment, retain a 
limited jurisdiction for special purposes. With the rendi- 
tion of a judgment in a trade-mark application case, the Pat- 
ent Office has concluded its work. If the trade-mark is reg- 
istered, it rests with the courts to punish any violation of 
it. While the Patent Office may declare an interference 
between it and a pending application for registration, it 
cannot recall the trade-mark; it cannot even compel the 
holder of it to pay the slightest attention to the interfer- 
ence proceeding. Hicks v. Hides (79 Wis., 465) is not in 
point, for the court in that action, under the law appli- 
cable to it, had the reserved right to revise and alter its 
judgment. While the Patent Office may have in some 
cases revised and altered its judgments in trade-mark reg- 
istration cases, no express authority for such a step is 
found in the act of 1881. In Darraw v. Darraw (159 Mass., 
262) the case had only been dismissed or dropped from 
the docket to relieve it. The other cases cited are readily 
distinguished and not in point. Much reliance, however, 
is placed upon Scherer v. Caneza, (33 La. Ann., 314,) but 
that case only serves to illustrate the marked difference 
between an ordinary action in the courts and the pro- 
ceeding for the registration of a trade-mark under the act 
of 1881. The purpose and function of that act ceased 
when registration was granted and the trade-mark issued 
or when the registration was finally refused by the Com- 
missioner. As well said by counsel for the Co mmi ssioner 
of Patents: 

The law provided simply for registration or refusal, and nothing 
' more. When either of those things was done there was nothing 
remaining to be done under the provisions of the statute. 

In suits there often remains, as we have pointed out, 

something to be done even after entry of judgment. The 

case last referred to clearly shows this in holding that a 

suit is pending when something remains to be done — 

either to obtain, to execute, to annul, to enjoin, to regulate, or to 
revive a judgment. 

When the differences between the two proceedings are 
borne in mind, it logically follows that the case in no wise 
sustains appellant's contention. 

Our conclusion is that the decision of the Commissioner 
of Patents was in effect a rejection of the application — a 
refusal to grant the registration because it was not a 
"pending application" as that term is used in sections 
14 and 24 of the act of February 20, 1905. We are of the 
opinion that this ruling was correct and we therefore 
affirm it. 

This decision will be certified to the Commissioner of 
Patents as required by law. Affirmed. 

No. 9.] 









Vn. frf- fu. 












oomnssioims's decisions,^- 




V Ex parte TTarhis 

Decided July IS, 1005. 
""/Trade-Marks— Division— Refusal of registration- 

PEAL. 

A requirement lor the division of a trade-mark application is 
to be regarded as a refusal of registration and as appealable. It.j 
will therefore not be reviewed upon interlocutory petition. 

2, Same— Character of Goods— Arts of 1905 and 1881 Com- 

pared. 
The extent of the right obtained by registration as to the 
character of goods upon which the. mark may be used is the same 
under the act of lfKM as under the act of I8S1. 

3. Same— Division— Goods of the Same Descriptive Proper- 

ties. 
A single trade-mark application should not include merchan- 
dise which is not ot •substantially the same descriptive proper-. 
. lies, ' : 

Of PETITION. 8SW '" "''I. 

TRADE-MARK FOR JEWELRY AND JEWELERS' StfSlSMES. -** 

Mr. James Hamilton for the petitioner. 
Allen, Commissioner: 

This is a petition from the notion of the Examiner of» 
Trade-Marks objecting to the words of description used by ' 
the applicant for registration upon the ground that they' 
are indefinite and for articles which arc not of the same de- 
scriptive properties and thereupon requiring division of 
the application. 

The Examiner bases his objection upon the decision in 
ex parte Faxon, (103 O. G., 891.) In that case the question 
of the limitation of a single trade-mark was considered and 
the conclusion reached that a trade-mark should not in- 
clude merchandise which is not of substantially the same" 
descriptive properties, the conclusion reached being that 
the scope of the right acquired by registration was not dif- 
ferent from the right which, to be invaded by an infringer, 
would require the infringer to have applied the mark "to 
merchandise of substantially the same descriptive proper- 
tics as those described in the registration." 

It may be stated that the act of February 20, 1905, in de- 
fining who shall be an infringer of a trade-mark registered 
under this act declares, section 16: 

Any person who shall, without the consent of the owner thereof, 
reproduce, counterfeit, copy, or oolorably imitate any such trade- 
mark and affix the same to merchandise of substantially the same 
liisinptivepropertiesasthosesetforthintheregistratibn. * * * 
shall bo liable to an action for damages therefor at the suit of the 
owner thereof. 

Th<i extent of the right obtained by registration as to' the 
character of goods upon which the mark may bMIs»d thus 
appears to be the same, in effect, as it was under the act of 
1881, and the conclusions reached in e.r parte Faxon are ap- 
pli<«ble to the registrations made under the new law. 

The Supreme Court of the United States in the case of 
Utrinmelz v. Allen (109 O. C, 549) concluded that upon 
application for 'patent a requirement for division of an 
application was a refusal of the applicant's right and is ap- 
pealable, the Court saying: 



Assuming the right in an inventor as expressed in the first prop- 
osition, the Primary Examiner denied the right. True, a distinc- 
tion can be made between his ruling and one on the merits, if we 
regard the merits to mean invention, novelty or the like. But in 
what situation would an applicant for a, patent be? If he yield to 
the rule he gives up his right of .ioindcr. If he does not yield lie 
will not be heard at all, and may subsequently be regarded* as hav- 
ing abandoned his application. (Seel 4S!M, K. S.) A ruling hav- 
ing such effect must be considered as final and appealable. 

It is thought that a requirement for division by the Ex- 
aminer of Trade-Marks, by parity Of reasoning, amounts to 
the refusal of the right of the applicant to register his trade- 
mark with the breadth of use claimed by him and that 
such a ground of division is a rejection of a portion of his 
claimed right and must be considered as a refusal of regis- 
tration as claimed by him and is appealable under section 
8 of the act of 1905, which provides — 

That every applicant for the registration of a trade-mark, or for 
the renewal of the. registration of a trade-mark, which application 
is refused, or a party to an interference against whom a decision 
has been rendered, or a party who has filed a notice of opposition 
as to a 'trade-mark, may appeal from the decision of the Exam- 
iner in charge of trade-marks, or the Examiner in eha rge of inter- 
ferences, as the ease may be, to the Commissioner in person, hav- 
ing once paid the foe for such appeal. 

Upon this conclusion the contention cannot be reviewed 
upon petition, and for this reason the petition is dismissed. 

The Examiner suggested the use of the term " badge" in 
place of the term insignia, showing that the former term 
is more definite in moaning and more widely used. In 
view of the fact that the applicant states his intention to 
amend his application by adding the terms ''emblems and 
badges" it would seem unnecessary to continue the word 
insignia. As to this portion of the petition the action of 
the Examiner is affirmed. 



i 



/ 



COMMISSIONER'S DECISIONS. 



// GJ 



Feank and Gutmann v. Macwilliam 

Decided July 12, 1905. 
Trade-Mark Interference. 

Where M. is the registrant of a mark for suspenders, which 
mark he has applied only to suspenders for trousers, and F. and 
G. prove prior adoption of the same mark for garters for men's 
half-hose. Held that the word "suspenders " in M.'s registration 
is specific to suspenders for trousers, that suspenders for trousers 
and garters for men's half-hose are goods of different descrip- 
tive properties, and that F. and G. have therefore failed to over- 
come the prima facie case made by M.'s registration. 
Appeal from Examiner of Interferences. 

TRADE-MARK FOR SUSPENDERS. 

£ Messrs. Brown <& Seward for Frank and Gutmann. 

Messrs. Loth-op & Johnson for Macwilliam. 
Allen, Commissioner: 
This is an appeal by Frank and Gutmann from the deci- 
. sion of the Examiner of Interferences adjudging that Mac- 
f william was the first to adopt and use the word "Presi- 
, dent" as a trade-mark for suspenders. 

The Examiner of Interferences says in his decision:. ». 
. The consideration of this case is greatly simplified bv the admis- 
sions made by the respective parties. It is adniitted by Macwit 
ham that Frank & Gutmann adopted and used the word •• Pi™ - 

' OrtSte s'mSF 8 "??'?* i f01 ' T n ^ g 5 rt ? rs for half - hosc as early as 
used ?& ™«rt „Ji' S a L so adlmtted that they have continuously 
tw t^?,f<? P0n ? uc ? f a L ters ever since ' and « "ay be stateS 
that the testimony m behalf of Frank & Gutmann established 

neverSfhe I l™.^ tte ?, by J rank&Gutma ™ thattrfeyhSve 

I STwiostlSw? SlJ«^ S l de!1 A "Ponanyotherarticlethanmen's 

Sn«"S jS*? 1 wlt! ? the g art «'s offered in evidence by 

f Q m ,%\ J'\ n . k * Gutmann's Exhibit C." (Frank, rebuttal, 

™lk i?;L t s stf - temen t Macwilliam claims to have used the 

< S, a, H= t„°? JanUar y h m7 - This a PP ears to have been an error, 

foi his testimony snov,-s that he did not adopt and us» the word 

, President " as a trade-mark prior to December 897 or the eari v 

part 01 January, 1898. Macwilliam never made garters or hose 

supporters, nor did he ever use the trade-mirk " President " unon 

any other article than suspenders for trousers. (Qs.36 and 37 ) 

Macwilliam has registered the mark and is ■prima facie 

the owner, and therefore the decision must be in his favor 

1 unless it is concluded from the above statement of facts 

■ that Frank and Gutmann have established their right to 

| the use of the mark upon suspenders. 

Upon the admitted facts this case turns upon two ques- 
i tions: 

First, the meaning of the word "suspenders." It is con- 
tended, on the one hand, that it is generic, including men's 
hose-supporters, as well as suspenders for trousers, and, on 
tb.eotr.er hand, that it is specific to suspenders for trousers. 

Second, if the word is found to be specific, are hose-sup- 
porters and suspenders goods of substantially the same de- 
scriptive properties, so that the use of the mark upon one 
would prevent others from acquiring the right to use it 
upon the other? 

The word "suspenders" has acquired a distinct and 
well-understood meaning and is universally understood to 
apply to the support for trousers. This was evidently the 
meaning given to it by Macwilliam when he secured his reg- 
istration, and no reason is apparent for giving to it a 
strained or unnatural construction. Frank and Gutmann 
apparently seek to force an unnatural meaning "upon., the 
word in order to include MacwiUiam's mark, as avsII as 
their own. They thereby give to the word a meaning 
Droader than the field eovored by their use of the mark. 
They are entitled to prima fade ownership only of the field 
whicn they have actually appropriated, and they cannot 
extend it by the words used in describing it. They are en- 
titled to ,use the mark upon hose-supporters and upon 
goods of substantially the same descriptive properties; but 
they are not entitled to use it upon suspenders for trousers 
and to prevent others from so using it unless suspenders 
and hose-supporters are goods of substantially the same 
desei ptft ' 




very clear that no or.3 would buy hose-supporters 
thinking that he was buying suspenders any more than he 
would buy gloves thinking that he was buying shoes. ! The 
structure, use, and purpose of the devices are different. If 
a party familiar with a mark used upon one should con- 
clude upon seeing the same mark upon the other that the 
same manufacturer had extended his business and com- 
menced making the other, it would be because of no con- 
fusion in. his mind between the two articles. To regard 
the trade-mark right as including both would be to give it 
the effect ox a trade-name used upon all goods made by a 
particular man or .company and not the effect of a trade^ 
mark upon particular goods. The parties are here seeking 
the registration of a trade-mark and not a trade-name. 

Notwithstanding the fast that hose-supporters and sus- 
penders are made up of similar materials and both perform 
the function of supporting something, their structure, use, 
and purpose are so different as to prevent the conclusion 
that they are goods of substantially the same descriptive 
properties. 

Since Frank and Gutmann have not used the mark upon 
suspenders, they have not overcome the prima facie case 
made by iliowiilis^'s r:-^'is tj : :'.oi>. 

The decision of the Examiner of Interferences in favor 
of Macwilliam is affirmed. 



/ 











COMMISSIONER'S DECISIONS. j 

Ex tarte Smith-Briscoe Shoe Company, f 7 

Decided June HO, IMS. t " 

1. Trade-Mark— Registration of. 
Held thni B trade-mark for boots and shoos which consisted. 

of a Maltese cross having a monogram and other inscriptions 
(hereon should not be registered in view of a registered mark 
consisting of a Maltese cross without the inscription and mono- 
gram used upon boots and shoos. 

2. Same— Same. 
Held that it is-.clcnrly the duty of this Office to refuse regis- 
tration whenever in its opinion 'the applicant's mark so nearly 
resembles a prior registered mark as to mislead purchasers as 
to the origin or ownership of the goods upon which the two 
marks are used and tli.it it is'not necessary that the marks be 
identical, but only that there be such resemblance as to be likely 
to lead parties to purchase the goods of the applicant supposing 
them to be goods produced by the registrant. 

On appeal. 

trade-mark for shoes. i. 

Mr. B. W. Bishop for the applicant. 

Allen, Commissioner: 

This is an appeal from rhe v action of the Examiner of 
Trade-Marks refusing to register a trade-mark for shoes, 
which is described in the application as follows: 

This trade-mark consists of a monogram of the letters ' 
,-ith the letters "C" and " " °< ,h » onnosite sides of tl 
j-ara, the whole, being arrang 









'SBS' 



with the letters "C" and " " at the opposite sides of the mono- 
™m tlie wUlc being arranged in a circle at the center of a solid 
background having the form ol a Maltese cross. 



of'the'erossttre the words '■The Better the Grade the Bigger the 
Trade." 

This mark has been refused registration in view of a ( 
mark registered by John H. Cross January 12, 1904, No. 
41,854. The registered mark consists of a Maltese cross 
used uptMi hoots and shoes. 1 

ThB appellant argues that its mark should be registered 
-because of differences between it and %he previously-reg- 
istered mark. The registered mark does not contain a 
monogram or printed words, but is a plain Maltese cross 
mar<B up of black lines. The appellant says: 

* * * the Office should recognize that a mere outline cross 
i, not ,ho^m™r,,n" -color cross with a distinctive mono- 

open center. 

It is further said that the question raised by this Office 
is really one of infringement, and that— 

This Question is for the courts to determine and the Patent 
nm co a h mid not refuse registration whore the applicant s ma k 
"sp-omino'ntly and distinctively different from tne prior regis- 
tcred mark. 

Section 5 of the act of February 20, 1905, provides that 

marks shall not lie registered— 

* * * which so nearly resemble a registered or known trade- 
mark owned and in use bv .mother, an, appropriated to m 
rlinvlise of the same descriptive properties, as to »e likely to 
o^NTeon fusion or mistake in the mind* of the public, or to decert e 
purchasers. 

Under this statute it is clearly the duty of this Office to 
refuse regisl ration whenever in its opinion the applicant's 
mark so nearly resembles a prior registered mark as to mis- ; 
lead purchasers as to the origin or ownership of the goods 
•upon which the two marks are used. It is not necessary 
that the marks be identical, but only that there be such 
resemblance as to be likely to lend parties to purchase the 
goods of the applicant supposing them to bo goods pro- 
duced by the registrant. 

In tie present case the Maltese cross is the thing which 
would attract the attention of purchasers in the appel- 
lant's mark, as well as in the registered mark. The fea- 
tures which the appellant has added to the registered mark 
are not such as would prevent confusion between the two. 
marks. Purchasers would be likely to regard them as. 
features added by the registrant to his mark rather than as 
the independent mark of a different manufacturer, oven if 
they remembered that the registered mark did not include 
them. 



In Bass, Bakli'f, and Grctton v. Christum Feigenspan. cat. 
Fed Rep., 206) the circuit court had before it the question 
whether a mark consisting of a plain triangle was infringed 
by a mark consisting of a triangle made up in a particular 
way and having a monogram and scroll therein, and it was 

""These two syml^sa—od from .^e^son^onlabols 

^«;sie¥ss^^^^ 

the triangle. 

The analogy of that case to the present, is apparent, 
.(See also the decision of the Court of Appeals of the Sev- 
enth Circuit in Johnson and Johnson v. Bauer and Black, 
S2 Fed. Rep., 662.) 
The decision of the Examiner of Trade-Marks refusing 

registration is affirmed. 




//7- o^f. ^°^1, 



/~Z2A 



OOMMISSIONEE'S DECISIONS, 



.?;-• ; 



l # 



JC A N E P A tt . BOEHM. 
Decided July 6, 1905. 

1, Trade-Mark Interference — Registration Prima Facie 
Evidence of Ownership 
r Held that registration is, under the law, prima facie evidence 
that the registrant was the owner of the mark at its date; but 
it cannot be taken as establishing any earlier date of use of the 
mark for him. 
?. Same— Testimony Overcoming Record Date. 

Where one party took no testimony, but rested upon the 
prima facie case established by thefregistration of the trade- 
mark in issue, and his opponent produced several witnesses testi- 
fying to prioruseof themark by him, Held thatthe prima facie 
case is overcome and that the opponent is entitled to regis- 
tration. 

trade-mark for noodles. 

Mr. Wm. 0. Belt for Canepa. 

Messrs. B. C. Evert & Co. for Boehm. 
Allen, Commissioner: 

This is an appeal by Boehm from the decision of tie 
Examiner of Interferences to the effect that Canepa was 
the first to adopt and use the trade-mark in issue and is 
entitled to registration. 

The issue is: 

The representation of an eagle for macaroni and vermicelli. 

The mark was registered by Boehm on November 3, 
1903; but he has taken no testimony and is therefore con- 
fined to that date. His registration is, under the law, 
prima facie evidence that he was the owner of the mark_ 
at its date; but it cannot be taken as establishing any 
earlier date for him. Canepa has. presented evidence to. 
show that he and bis predecessors in business owned and 
used the- trade-mark long before Boehm 's date of registra- 
tion. 

Canepa is dead; and Ihis. application is. being prosecuted 
by his executor, . William H. Burke. It appears that 
Burke was employed in 1890 and was the manager for the 
applicant, Canepa, and for his predecessors. He says that 
the business was first conducted by Canepa Brothers, con-, 
sisting of the applicant, John.B: Canepa, and his brother, 
James A. Canepa. The brother died in 1897,.and in 1899 . 
the applicant, John B. Canepa, acquired the entire busi- 
ness and thereafter conducted it in his own name. 

Burke says that during all of the time he was employed 
a large business was done in selling vermicelli and maca-. 
roni having thereon a trade-mark consisting of the repre- 
sentation of an eagle, such as shown in. exhibit "Canepa 
Label." 

Hammerschlag says that he was employed by Canepa 
and his predecessors for twenty years and that during all 
that time they sold vermicelli and macaroni under the 
trade-mark in issue. The goods were, furthermore, adver- 
tised in printed circulars in connection with the represen- 
tation of an eagle. 

Nigro testifies to the use of the trade-mark since 1892, 
and Kressmacn, who is a printer, says that he has printed 
for the Canepas about eight hundred and twenty-five 
thousand labels bearing the trade-mark in issue. 

The proofs on behalf of Canepa overcome the prima 
facie case made out by Boehm's prior registration and 
warrant the conclusion that he, or rather his successor, is 
entitled to registration. 

The decision of the Examiner of Interferences in favor of 



1 




^j^ybj^-^^^ su^ coUa.'- y 



7S-— ^ y- fir-**- (&U\ /f^ 



" (a. M-czstZZas 




^iXIAjs^^e? (/ 









Canepa is affirmed. 










Giles Remedy Co. v. Giles. 

Decided June 29, 1905. n«^l»m 

"Trade-Marks— Interference— Burden of Proof— Regis- 
tration as Evidence. 
The registration of a trade-mark is prima lacie evidence of 
ownership, and therefore the burden of proof is upon the oppos- 
ing applicant in an interference. 

Same— Same— Ownership— Registrant Against Applicant., 
An applicant for the registration of a trade-mark in interfer- 
ence with a registrant cannot prevail by showing that the regis- 
trant has parted with the ownership of the mark,.but only by 
showing that he, the applicant, is the owner. 
3. Same— Same— Same. 

Where the registrant shows that he was the first to adopt and 
use the trade-mark and the opposing applicant for registration 
faiis to show that he derived title from the registrant, Held that 
the decision must be in favor of the registrant. 

On appeal. 

trade-mark for medicines. 

Application of Giles Remedy Co. Trade-mark of San- 
ford F. Giles registered June 29, 1897, No. 30.2S5. 

Messrs. Charnbeiiin & Wilkinson for Giles Remedy Co. 

Messrs. Jones & AMintjton for Giles. 
Allen, Commissioner: 

This is an appeal by the Giles Remedy Co. from the de- 
cision of the Examiner of Interferences adjudging that 
Sanford F. Giles was the first to adopt and use the trade- 
mark in issue. 

The issue is as follows: 

The word " Magic " and the representation of a seal, for blood- 
purifying medicine. 

Giles is a registrant, his mark having been registered 
June 29, 1897, and the Giles Remedy Co. did not file its ap- 
plication for registration until September 15, 1904, more 
than six years thereafter. 

The application of the Giles Remedy Co. was made by 
Daniel S. Giles, Sr., as president. The registrant, Sanford 
F. Giles, is a son of Daniel S. Giles, Sr., and it is admitted 
that the medicine on which the trade-mark in issue was 
used was invented by Daniel S. Giles, Sr. 

Sanford F. Giles is prima facie the owner of the mark in 
issue because of his registration, and the Giles Remedy Co. 
•cm prevail in this proceeding only by showing that it was 
the first to adopt and use the mark or was the successor in 
business of Sanford F. Giles. 

Briefly stated, the history of the business and use of the 
mark in controversy appear from thejsvidence to be as fol- 
. lows: s=i ~ 

In July, 1893, Sanford F. Giles, who was a telegraph op- 
erator at Pleasanthill, Mo., commenced making a medi- 
cine and selling it under the name of the Giles Remedy 
Co., and he used on that medicine the trade-mark here in 
controversy. In the fall of 1894 Sanford F. Giles visited 
Kansas City, where his father, D. S. Giles, lived, and there- 
after D. S. Giles, as well as S. F. Giles, sold the medicine 
under the name of the Giles Remedy Co., the mark in issue 
being used upon the goods. After September, 1894, the 
medicine was made by D. S. Giles in Kansas City and not 
by the son, S. F. Giles, at Pleasanthill. Early in 1896 
S. F. Giles resigned his position as telegraph operator at 
Pleasanthill and moved to Kansas City and devoted his 
time to selling medicine having thereon the trade-mark in 
issue. On April 13, 1897, Sanford F. Giles filed in this 
Office an application for the registration of the trade-mark 
in his own name, and on June 29, 1897, it was registered. 
In the fall of 1899 father and son moved to Chicago and 
continued selling the medicine in the name of the Giles 
Remedy Co. In 1904 there was a disagreement between 
S. F. Giles and his father, D. S. Giles. On June 6, 1904, S. F. 
Giles incorporated the Ekolene Chemical Company and 
executed an instrument transferring to it the good-will and 
business of the Giles Remedy Co. On June 8, 1904, D. S. 
Giles, Sr., D. S. Giles, Jr., ar.'l J. H. Giles formed a corpo- 
ration under the name of tlio Giles Remedy Company. 
D. S. Giles, Sr., then executed an instrument purporting to 
convey the business and good-will of the old Giles Remedy 
Co. to the new corporation. On September 15, 1904, D. S. 
Giles filed the application for registration of the trade- 
mark in the name of the newly-formed corporation, Gile3 
Remedy Co. 






It is to be noted that before June, 1904, the Giles Rem- 
edy Co. was not a corporation, but was a mere trade-name. 
Each of the parties, S. F.Giles and D. S. Giles, Sr., claims 
that he alone was the owner of the business and was 
trading under the name of the Giles Remedy Co. It is 
apparent that neither could transfer the business unless 
he was the owner; but in June, 1904, separate instruments 
were executed by them attempting to transfer the busi- 
ness to different parties. Thereafter both of them or 
their supposed successors continued in the business, using 
the trade-mark. 

The applicant corporation, Giles Remedy Co., is not 
entitled to registration unless D. S. Giles, Sr., was, in fact, 
the owner of the old business done under the trade-name 
Giles Remedy Co. and had authority to transfer that busi- 
ness to the corporation. We are not here trying the va- 
lidity of the registration made in the name of S. F. Giles, 
as counsel for appellant seems to suppose, but we are con- 
cerned primarily with the question whether the corpo- 
ration Giles Remedy Co. is the legal owner of the trade- 
mark and is entitled to registration. 

Without discussing the testimony in detail, it is suffi- 
cient to say that I agree with the Examiner of Interfer- 
ences that S. F. Giles seems to have been the real owner 
of the business before June, 1904. His first use of the 
trade-mark and the surrounding circumstances thereafter 
support that conclusion. He was the first to adopt and 
use the trade-mark, and although he was afterward asso- 
ciated with his father, D. S. Giles, Sr., in selling goods 
under the mark it does not appear that he parted with 
the ownership of the business and of the mark and that 
D. S. Giles, Sr., acquired exclusive ownership. The most 
favorable construction for D. S. Giles which could be 
placed upon the relationship of the parties prior to June, 
1904, is that they were partners or joint owners. Even 
if the sole ownership by S. F. Giles were in doubt it seems 
very clear that D. S. Giles, Sr., ha3 not established that 
he alone was the owner. In the absence of such proof the 
decision must be against the Giles Remedy Co., since its 
Alleged title is derived from D. S. Giles, Sr., alone. 
The decision of the Examiner of Interferences is affirmed. 



COMMISSIONER'S DECISIONS, 




^f 




Ex parte Hamilton and Hamilton, Jr. 

Decided July 13, 1905. 
Trade-Marks— Appeal— Division. 

A requirement for the division of a trade-mark application is 
to be regarded as a refusal of registration and is appealable. The 
matter will not be reviewed on interlocutory petition. 

On PETITION. 

TRADE-MARK FOR ALL KINDS OF JEWELRY. 

Mr. James Hamilton for the applicants. 
Allen, Commissioner: 
This is a petition asking — 

(1) That the Examiner be instructed to withdraw his objection 
to the inclusion of all said articles in their said application in view 
of tho fact that all said articles are articles of jewelry for personal 
wear and adornment, and are of the same descriptive properties. 

(2) That in case the preceding prayer is not granted, that the 
Examiner be instructed to group said articles as in justice and 
equity to the Honorable Commissioner may seem meet. 

The Examiner has required a division of the application, 
and in view of the decision of the Supreme Court in V. S., 
ex rel. Sieinmete, v. Allen, Commissioner of Patents, (109 
O. G., 549,) his action must be regarded asa refusal of reg- 
istration. Section 8 of the act of February 20, 1905, pro- 
vides that where registration is refused the applicant may 
appeal, "having once paid the fee for such appeal." The 
present petitioner has not appealed or paid the fee, but 
seeks to obtain a review of the Examiner's action by in- 
terlocutory petition. 

It is clear that the applicant is not entitled to a review of 
the Examiner's decision except by an appeal filed in ac- 
cordance with the requirements of the statute, and there* 
fore this petition is dismissed. ' „ 



/ JLf 




Bulte v Ingleheart Bros, et al 137 Fv R. 492. 
Assignee n't. 

An assignment of a flour trade mark disassociated from 
the business in which it was used and in which it had acquired its 
value by association with the manufacture of flour by the 
originator and his successors, was void. 




}W 




,'S DECISIONS, 










- 



Cahn, 'Belt & Company. 
Decided October ip, 1S05. 

1. Trade-Marks— "Ten-Years" Clause— Coax. 9 f Arms Not 

Registrable. 
The coat of arms of the State of Maryland is.njot registrable 
under the trade-mark act of February 20, 1905, although it had 
been used by the applicant for ten years prior to thftpassageo* 
that act. 

2. Same— Same— Same— Public Tolicy. 

The use of the flag or the ooat of arms of a State or nation 
for purposes of trade is against public policy, aod the prohibi- 
tion in the act of February 20, 1905, against the registration of j 
marks containing them was in recognition of such policy and ! 
not as establishing it. 

3. Same— Same— Same— Use op Flag or Coat op Arms a 

Wrong. 
The policy which prohibits the registration of a mark consist- 
ing of the flag or coat of arms is not dependent upon or affected 
by the length of time the mark has been used. Its use is in the 
nature of a wrong, and persistence in that wrong is to be con- 
demned rather than rewarded. 
i. Same— Same— Marks Prohibited By Public Policy Not 
Registrable. 
Section 5 of the act of Fobruary 20, 1905, does not require or 
permit the registration of marks the use of which is prohibited 
by public policy merely because those marks have been used for 
ten years. 

5. Same— Same— Exclusive Use Required. 

The "ten-years" clause of the trade-mark act does not pro- 
vide for registration where the applicant was the sole user of 
the mark for ten years, but requires that he shall have had "ex- 
clusive "use. 

6. Same— Same— "Exclusive" Defined and Distinguished 

From "Sole." , 

To have "exolusive" use of a mark, the applicant must have 
the right to shut out or debar others from using the mark, and 
it is not sufficient that he was the only one in fact using the mark. 

7. Same— Same— No Exclusive Use if Against Public Policy. 

A mark the use of which is prohibited by public policy is inca- 
** pable of "exclusive" appropriation, and therefore ten years' 
use of such mark gives no right to registration. 

8. Same— Same— Right to Exclude Others Prerequisite to 

Registration. 
The ' ' ten-years " clause of the trade-mark act does not per- 
mit registration in any case where the user could not in the ab- 
sence of registration enforce his right to the mark and exclude 
others from the field by action brought in a court of equity. 

9. Same— Same— Unfair Competition in Trade. 

The "ten-years" clause of the trade-mark act does not per- 
mit the registration of any mark which would not be protected 
under the doctrine of unfair competition in trade in the absenqc. 
of registration. 

. 10. Same— Same— Ownership a Prerequisite— Prima Facib 
Evidence. 
Since the trado-juark act docs not confer upon users property 
) rights in marks, but presupposes the existence of such rights 
and merely provides that registration shall be prima facie evi- J 
donee of that ownership, Held that it does not contemplate the ' 
registration of any mark which is inoapable of ownership by 
any individual. 

11, Sams— Same— Construction op Statute— Fraud to be 
Avoided. 
To give prima facie evidence of ownership of a mark to an in» 
dividual when the mark is known to be incapable of ownership 
by any individual would be In the nature of a fraud, and the law 
to not to be construed as requiring this if it is capable of any 
ether construction. 

On appeal. 

trade-mark for wiiisky. ~ ' J 

Main. Steuart & Stevart for the appellants. ' 

r.i.EN, Commissioner: 

This is an appeal from the'action'of the Examiner of 
Trade-Marks refusing to register a mark described as fol- 
lows: 

A pictorial representation of the arms or seal of the State of 
Maryland, with certain additions or variations, as follows: The 
shield bears upon its face a representation in solid black of a tre- 
foil or r.lovtr-foaf. or the device termed a "club " used upon play- 
ing-cards. Upon the breast of the eagle, above tho snicldis a 
monogram of the letters "CB* Co." Within and close to a cir- 
cular border which surrounds the coat of arms are the words 
''The Great Seat of Maryland" and the numbers "1682" and 
"1854." Bctweon this border and an outer circle are the words 
"Maryland Club Pure Rye Whiskev, C B. & Co. Special Trade- 
Mark;" but the latter 1 words and the outer circle Inclosing them 
may be omitted or changed at pleasure, and tho monogram may 
be omitted or otherwise displayed without affecting the charac- 
ter of our trade-mark. 



Registraiion'^is'bBen refuse* because the mark: includes 
the coat of arms of the State of Maryland. The features 
Which the appellants lave added are not such as destroy 
the identity of the coat of arms, and therefore their right 
to registration here must depend upon their right to regis- 
ter the coat of arms of a State. 

Section 5 of the act of February 5, 1905, provides, in ef- 
fect, that no mark shall be registered which— 

of the Un/teTsSJJf^ 3 the ? ag , or ? oa, Y ' arras ° r °«>er insignia 
oi tne united States or any simulation thereof, or of anv state nr 
municipality or of any foreign nation. y ate or 

Under this provision there oanlhe no doubt that the appel- 
lants would not be entijled to register their mark if it were 
not for the following, contained in the same section of the 



act: 



And provided further, that nothing herein shall prevent the 



, or with Indian 



iVUZ'ZLSJT^L "™ ?° actual and exclusive use as a trade-mark of 
the applicant or his predecessors from whom he derived title for 
■ten years next preceding the passage of this act! 



The appellants have filed an affidavit alleging ten years'' 
exclusive use of the mark, andin so far as the form of their 
application is concerned ;they have brought it under this 



_ rl „ „ ^uiAjiuBu 'i-iiey nave Drougnt l 

Instructed proviso. They contend that they are entitled 
to the benefits of that proviso and 'that in view thereof re°- 
'istration cannot be refused 'because of the prohibition 
stated earlier in the same section against 4he registration 
*f the coat of arms of a State. 

• * 

It is apparent that this section was intended to confer 
the right of registration upon some parties because of ten 
^exclusive use of their marks which they would not 
have under other provisions of the act The other pro- 
visions permit the registration of all leg.tnnate trade- 
marks, and it is difficult to determine just what field wa 
intended to be covered by this clause. It surely was not 
intended to cover without distinction the entire field of 
marks, not technical trade-marks, which have been used 

for ten years. . . 

Even if it be conceded that the proviso in section 5 upon 
which the appellants rely was intended to permit the reg- 
istration of marks such as were referred to by the Supreme 
Court in Elgin Co.r. IUmois Co., (94 O. G., 755,) as fol- 

!°T* no sign or form of words can > be £BgW£*j £ fi™jg 

■ with equal right, for the same purpose, 

it is very clear that it was not intended to permit the regis- 
tration of marks the rights in which would not be pro- 
tected by the courts under the doctrine of unfair compe- 
tition in trade. The statute does not seek to confer upon 
the users of marks property rights therein which did not 
exit before the passage of the act. The statute presup- 
poses the existence of the property right or ownership and 
provides merely that registration shall be P nraafac,e evi- 
dence of that ownership. Since the statute does not pur- 
port to give title to the registrant, but is based upon the 
Supposition that he already has title under the pmeges 
of common law, it is difficult to see how it could have been 
tended to apply to classes of marks which the Supreme 
Court has said are incapable of ownership by any indi 
vidual. It surely could not have been the m ent on to 
^ prima facie evidence of ownership to a particula in- 
dividual in regard to a mark known to be incapable o 
ownership by any individual. To do so would be in the 
nlture of P a fraud" and the statute is not to be so construed 
if it is capable of other construction. 

The word "exclusive" in the above-quoted proviso i 
particularly significant. It necessarily implies the right 
of the applicant to exclude others from using *»«"**£ 
L the period mentioned, and not merely that he was the 
sot user during that period. He might be tho only ^ ua 
user and at the same time might have no right to prevent 
othcrs r„,„, entering the field and using the mark, and m 
, S uch case he would not have "exclusive use. In the 
American and English Encyclopedia of Law (Vol. H, P- 

'"^xelu^ve-mcans shutting out: debarring from participa- 



f 



—~~ _ — 1 . ^^^^M 

In the matter of The Union Ferry-Company (98 N. >"., 
139) the Court of Appeals of New York said : 

nn?"w?»SS?Ji °- a P ar f ic " ,3r P"™' to « Private corporation is 
hSl? " e !™ plr be*"*- the same power is repossessed 
by other corporatxons, so long as there is nothing to prevent the 
granting 01 such power to any other corporation preYem lae 

The word "exclusive" is derived from "ex" out and "rtaK- 
&I£ Sh f ' v n . aCt * tloea not S^t an exclusive privileged 
SHSMSttSlS* " "<* <>««** iro m P en j0y ing a 

The use of the word ' ' exclusive ' ' is particularly common 
in reference to patent and trade-mark rights, and it has the 
definite and well-understood meaning above indicated. 
The Supreme Court pointed out in U. S. v. Palmer (128 
U. S., 262) that the word "exclusive" in the Constitution, 
referring to patents and copyrights, prevented use by the 
Government itself, saying: 
The Constitution gives to Congress power "to promote the 

writings and discoveries," which could not be effect cd if the Gov 

The use of a mark prohibited by public policy confers no 
right upon the user to exclude others from the field, and 
^ therefore there can be no "exclusive" use of such mark. 
j As will be pointed out hereinafter, the use of the coat of 
) arms of a State as a trade-mark is prohibited by public 
| policy, and therefore the refusal of registration mi<mt well 
/ be based upon the single fact that the applicant has not 
had the actual and "exclusive" use which is a prerequisite 
to registration. Consideration of other features of the law 
however, throws additional light upon its meaning and 
strengthens the conclusion that it was not intended to per- 
mit the registration of the coatjof arms of a State 
Considering now the words of the statute relating to 
.-marks used for ten years, it is to be noted that the proviso 
is to the effect that "nothing herein shall prevent the regis- 
tration," etc. It is not to the effect that nothing shall pre- 
vent, lit does not provide that all marks previously pro- 
hibited shall be registered if used for ten years without re- 
gard to the nature or character of the marks. It simply 
s^s that no prohibition stated above shall operate to pre- 
vent registration, and therefore leaves the statute, in so 
far as marks used for ten years are concerned, just as if it 
contained no specific prohibition. Some marks, however 
would not be registrable, even in the absence of specific 
prohibition in the statute, since from their nature they are 
incapable of exclusive appropriation, and it was eleurly not 
the intention of the above-quoted proviso to admit all such 
marks to registration. Such intention is not expressed by 
the words used in the statute, and no good reason exists for 
assuming that such intention was in the minds f the law- 
makers. On the contrary, there are good reasons for con- 
cluding that such was not the intention. For instance it 
obviously was not the intention to admit to registration 
marks which comprise "immoral or scandalous°matter-» 
nor was it the intention to permit the registration of de- 
ceptive or fraudulent marks, such as was considered by the 

SoT 00 ^ W ° Tien<&Co - --C^omiaFigSyrupCo., 
(i Mi U. he., 623,) where it was said: 

extracted?? w^ofedfs °tom'^ l J* eim « l .*> a trade-mark is so 
which is false, no property cS LL 00 ,?"^/ di5tinct action 
<he right to the eS^^f^St^S&SSSf ™ r ° rta - 

The proviso, therefore, does not have the broad and 
sweeping effect of requiring this Office to register all marks 
prohibited m the preceding clauses of section 5. It fol- 
lows, therefore, that this Office is called upon to exercise 
its discretion in each case to determine whether or not the 
particular mark presented is such as should be registered 
If there are good reasons, aside from any prohibition in the 
statute, for refusing registration, there is nothing to re- 
quire this Office to register the mark. \jf 

There are good reasons why this Office shotdSktot regis- 
| ter the coat of arms of a State to be used as a trade-mark 
upon goods. The broad ground of public policy which un- 
derhes the refusal to register "immoral or scandalous mat- 
ter warrants the refusal to register the coat of arms of a 
State The reasons why it is against public policy to reg- 
ister the coat of arms of a State are not the same as in the 
case of immoral and scandalous matter; but both are based 
upon cons.derations of public policy which are controlling. 
In ex parte Schmachtenburg Bros. (51 MS. Dec, 204) Act- 
ing Commissioner Frot hingham said on October 8, 1892- 



* 



I am of the opinion that it is against pubn 
; the device above described as well as the coat of arms of any State 
[ or nation. 

In New Prague Flouring MUl Company (62 MS. Dec, 
437) Assistant Commissioner Greeley said on October 25, 
1897: 

It has been distinctly held that the coat of arms of the United 
States or of any State should be refused registration as being 
against public policy. (Schmaehtenburg Bros., 51 MS. Dec, 204.) 
There is no doubt that this applies equally to the seal of a State. 

i Commissioner Duell refused to register similar marks in 
rthe casjes of ex parte Penny (67 MS. Dec, 83) and The 
,CettuloidCompany,(67MS. Dec, 136,) and in ex parte Stand- 
ard, Fgehixm Company (89 O. G., 189) said: 



y^A 



It is conceded that the representation of the United States flag 

?>or se.is not permissible. While I am not prepared cow* to say, 
he question not being presented for decision, that the representa- 



tion of the United States flag should not be permitted to be reg- 
istered as one of the essential features of a traiie-mark, Pthink 
that its usein trade as a mark for goods does not tend to add "to 
its.glory. 

In the case of ex parte Ball (96 O. G., 2366) it was said: 

It is contrary to public policy to detract in any way from the 
honor which is due to the flag. This result certainly follows from 
its use as an advertisement in trade. Such use is not to be aided 
or encouraged by this Office. 

In ex parte BrandsvUle Fruit Farm Company (103 0. G.) 
registration was refused of the United States seal for the 
reason — 

that the use of such emblems is against public policy and is not to 
be encouraged. 

The public policy referred to has been recognized by the 
legislatures of various States, and by reason thereof stat- 
utes have been passed prohibiting the use of the flag for 
purposes of trade. This policy and the reasons underlying 
it were recognized by the International Convention for the 
Protection of Industrial Property, concluded at Paris 
March 20, 1883, since in article 6 it was said: 

The deposit may be refused, if the object, for which it is asked, 
is considered contrary to morals and to public order. 

And in the final protocol it was said: 

In order to avoid all misinterpretation, it is understood that the 
use of public armorial bearings and decorations may be consid- 
ered contrary to public order in the sense of final paragraph of 
article 6. 

It was in recognition of this public policy, and not as es- 
tablishing it, that Congress inserted the provision in section ~ 
■5 of the act of February 20, 1905, prohibiting the registra- 
tion ef toy mirk whieh— - 

consists of or comprises the flag or coat of arms or otncriinsignia. 
of the. United States or any_ simulation thereof or of any State or 
municipality or o'f any foreign nation. i 

The policy which underlies this prohibition is not de- 
pendent upon or affected in any way by the length of time 
that the mark has been used, any more than is the policy 
which prevents the registration of immoral or scandalous 
matter. It is evidently based upon the conclusion that 
the flag and insignia mentioned should not be used for pur- 
poses of trade and that such use is in the nature of a 
wrong. A persistence in that wrong for a period of ten 
years is surely not to be regarded as entitling the party to 
a reward; but, on the contrary, it would seem that such 
party should be condemned even more than one who has 
committed the wrong for a shorter period. It was evi- 
dently not the intention of Congress to give the reward of 
registration for persistence in something which in the same 
act it has pronounced wrong. 

It must be held that the " ten-years " clause of the trade- 
mark act does not permit registration in any case where 
the user could not in the absence of registration enforce 
his right to the mark 'and exclude others from the field by 
action brought in a "court of equity. 

The action of the Examiner of Trade-Marks in refusmg 
registration to the mark presented is right and must be 
affirmed. 

It is noted that the Examiner has made certain formal 
objections to the application; but since the applicants now 
acquiesce in these objections and agree to correct them by 
amendment it is unnecessary to consider them. 

The action of the Examiner of Trade-Marks is affirmed. 










COMMISSIONERS DECISIONS 
Ex parte Tub Carborundum Company. 

Drilled October 11, 1905. 

1. Trade-Marks-Application Must Include Description. 

The i rade-mark act of February 20, 1005, requires that the ap- 
plic , ti , a [ 0r registration include a description of the mark, as 
well as a drawing of it, and therefore a reasonably doOnite de- 
scription must be insisted upon. 

2. Same— Description— Reference to drawing. 

Where it is impossible by words of description to give a clear 
and accurate idea of the appearance, oi the mark, the descrip- 
tion should refer to the drawing far a more complete disclosure. 

3. Same- Description Does Not Change Trade-Mark Right. 

A statemont in the application of the prominent characteris- 
tics of the picture constituting the mark can neither limit nor 
len the applicant's right, since that right is based upon the 
actual use of the mark and cannot be changed by registration. 

On appeal. 

trade-mark for abrasive articles. 
Messrs. Bakewell & Byrnes for the applicant. 

Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register a mark described in the 
application as follows: 

The trade-mark consists of the representation oi an Indian's 
head. , 

The Examiner points out that this description would ap- 
ply to any and every representation of an Indian's head, 
and therefore rules that it is not a sufficiently specific de- 
scription of the particular form which the appellant has 
adopted and used. The drawing filed with the description 
shows a particular form of head and a background for it, 
and it appears that this drawing shows the mark just as it 
appears in the specimens. The applicant has made oath 
that drawing and specimens truly represent the mark. 

It is apparent , as stated on behalf of the applicant in ar- 
gument, that a much clearer idea of the appearance of the 
mark may be obtained from the drawing than from any 
amoun iption. It is obviously futile to attempt 

by detailed description to give a clear and accurate idea of 
the n ark, such as will be conveyed by a mere glance at the 
drawing. At the same time there are certain prominent 
characteristics of the picture which may be stated in de- 
scription. For instance, ii may be stated that the Indian's 
side face is shown on a dark circular background and that 
he has a head-dress of feathers. 

ion 1 of the act of February 20, 1905, specifically re- 
quires that i! ion include "a description of the 
trade-mark itself," as well as a drawing. Under the pro- 
visions oi thai section tiiis Office must require that the ap- 
ly definite description of the 
mark. In cases where it is impossible by words of descrip- 
c and accurate idea of the appearance of 
cription should refer to the drawing for a 
more complete di clo: tlte. 

Iti. i . iy this applicant should object to in- 

.;> any accurate statement of the 

features of ii^ mark as used. The right which it lias ac- 

:ly upon the u.jc of the particular 

i ores of 

that a '" i gistration, nor ci I e 

istration 
be scope of tl i it as ac- 

quire', of i ton law. This is because 

- ■ ■! ii in t purport to core 

■ hem. 
I 
i e with (he s 
ind therefore bis action inrefu ing registration^ affirmed. 




ISSIQNEB'S DECISIONS. 



W Ex parte Pfister & Vogel Leather Company. 

Decided October 11, 1905. 

Trade-Marks— Class of Qq,ods— Rejection— Appeal. 

Whero thu Examiner rules that the class of goods to which the 
trade-mark has been applied is stated so broadly as to include 
more than one trademark right and requires amendment, Held 
that his action amounts to a rejection and is appealable. It 
will not be reviewed on interlocutory petition without fee. 

On petition. 




trade-mark for leather. 



i --":% 



Mr. George W. CoUes for the applicants. 
Allen, Commissioner: 

This is a petition from the action of the Examiner of 
Trade-Marks requiring as a condition precedent to regis- 
tration that the applicants so amend their application as 
to include a particular description of the goods to which 
the mark is applied. 

The application now describes the goods simply as 
"leather," and the Examiner says that this word is so 
broad in its meaning as to include various classes of goods 
which are not of substantially the same descriptive prop- 
erties. In other words, he regards the application as cov- 
ering several trade-mark rights instead of one and rules 
that the applicant is not entitled to secure a single regis- 
tration covering those several rights. 

The controversy seems to go to the merits and not 
merely to the form of the application. The petitioners 
themselves say that to comply with the Examiner's re- 
quirement would limit their registration and deprive them 
of a part of the protection to which they regard themselves 
as entitled. The Examiner's action therefore amounts to 
a rejection of the application and under the act of Febru- 
ary 20, 1905, is appealable. It cannot be reviewed on in- 
terlocutory petition without fee. 

The petition is dismissed. 



ce is accordingly dissolved. 



JOMMISSIOHER'S DECISIONS . ftf 

~'W Taussig v. Taussig. ..,_„.,: 

Decided October 11, 1905. 
Trade-Mark Interference— Same Person the Real Ap- 
plicant for Both Applications,— Interference Dis- 
solved. 
Where it appears that the same party is the owner of the 
trade-marks set forth in each of the applications in interference 
' and is the real applicant in each case, acta that noquestionoi 
priority exists and that the interference should be dissolved. 

On reference. . ... j 

trade-mark for whisky. 

Mr. Arthur E. Wallace for Oscar Taussig. 

Mr. Arthur E. Wallace for Joseph Taussig. & 

Allen, Commissioner: 

This case comes up on reference by the Examiner of In- 
terferences submitting that the interference should be dis- 
solved. 

The applications involved in the interference are those of 
Oscar Taussig, doing business at No. 79 Barclay street un- 
der the firm-name and style of Joseph Taussig, and of Jo- 
seph Taussig, a firm composed of Oscar Taussig, sole mem- 
ber, doing business at 79 Barclay street, New York. 

An affidavit has been filed in the interference by Oscar 
Taussig setting forth that he is the sole and exclusive 
owner of the trade-mark set fojth in each of the applica- 
tions involved. Under these cii eumstances no question of 
priority exists, and the interferei c 












/dM 




.ooignssroiEEB decisions 
A f. ^f-C^ a 

WEIL-HASKELLCOMPANr V. GniFjfcx COMPANY. 
Decided October 11, 100$. 

1. TRAD2-3lAP.K-ERr.OR IN" PUBLICATION IN OFFICIAL GAZETTE - 

Refublioation. 
Where the publication of trade-niarktatbX Official G izett- 
lor purposes of opposilion erroneously d scribed the class of 
goods, Held that the mark should be republi; - 
2. Same— Same-Opposition Dismissed With Pbivkegb o= 
Renewing Aftep. Publication. 

WieyfamarkwaserroneouslypublisiiedinOFProiAi.GAZET^E 

as for ' clothes" instead of dWte.and an opposition was Bte I 
based upon this error, to which demurrer n made, ffrfd that 
the mark should be republished anl that the opapsition should 

be dismissed with permission to renew after the new publica- 
tion. 

On reference. 

TRADE-MARK FOR LADIES', MEM'S, AND CHILDREN'S WEAR. 

Messrs. Mason, Fenwick de Lawrence for Weil-IIaskell 
Company. 

Mr. Joseph L. Levy and Mr. Howard A. Coombs for 
Griffon Company. 

Allen, Commissioner: 

The Examiner of Interferences has called my attention 
to an error in the publication of the mark of the Griffon 
Company which led to the opposition filed by the Weil- 
IIaskell Company. 

It appears that the mark of the Griffon Company was 
published in the Official Gazette of June 6, 1905, and 
that the class of goods to which the mark was applied was 
(here stated to bs "clothes for ladies', men's, and children's 
wear." An examination of the application shows that the 
word "clothes" should have been printed cloth*. 

On June 29, 190-5, the Weil-Haskell Company filed a no- 
tice of opposition to the registration on the ground that the 
Griffon Company is not the owner of the mark as applied to 
clothes and that the Weil-Haskell Company has used the 
mark in advertising "garments." The Griffon Company 
filed a demurrer to the notice, alleging that the use of the 
mark upon clothes is not an anticipation of or bar to its 
proposed registration of the mark for cloths. It is alleged 
that the goods are not of substantially the same descrip- 
tive properties. 

It is apparent that the error in the publication by this 
Office has led to the controversy involved in the opposition 
and the demurrer thereto. It is equally apparent that the 
Weil-Haskell Company should be permitted to insist upon, 
amend, or withdraw its opposition, as it may be advised, 
after knowing the character of the pending application filed 
by Griffon Company. It seems equally apparent that 
there may be others who would wish to oppose the registra- 
tion of the mark for cloths if they were aware of the fact 
that registration of the mark used thereon was sought. 

Under all of the circumstances the only adequate rem- 
edy for the error in publication seems to be a new publica- 
tion. It is therefore ordered that the application of the. 
Griffon Company be republished, correcting the error. The 
present opposition is dismissed with permission to renew it 
after the new publication. 



COMMISSIONERS DECISIONS. 




Tue Robert Smith. Ale Brewtxg Company v. Beadles- 
ton & Woerz. 

Decided October 28, 1005. 

1. Trade-Mark Interference— Motion to Dissolve— Juris- 

diction of Examiner of Trade-Marks Defined. 
Motions to dissolve trade-mark interferences should be heard 
and determined by the Examiner of Trade-Marks and not by 
the Examiner of Interferences. 

2. Same— Same— Same— Reconsideration. 

A motion to dissolve an interference is, in effect, arequestfor 
reconsideration in the light of argument of the action declaring 
the interference, and therefore it should be heard and deter* 
mined by the Examiner who declared the interference. 

3. Same — Same— Jurisdiction of Examiner of Interfer- 

ences—Act 1905 Construed. 
There is nothing in the act of February 20, 1905, which re- 
quires that the Examiner of Interferences determine anything 
in trade-mark interferences except the conflicting claim of title 
between the two parties involved. He is therefore not required 
to determine motions for dissolution. 

4. Same— Question of Title. 

A trade-mark interference is to be declared only where there 
are conflicting claims made to the same trade-mark right which ' 
is regarded as registrable, and the question to be determined is 
which of the parties has title and is entitled to registration. 
The only conflict is as to title, and the only thing to be decided 
as between the parties is title. , 

On reference. 

trade-mark for lager-beer. 

Messrs. Wiedersheim & Fairbanks for Smith Brewing 
Co. 

Messrs. Diclcerson, Brown, Raegener & Binney for Bea- 
dleston & Woerz. 
Allen, Commissioner: 

The Examiner of Trade-Marks has referred the" above- 
entitled case to me with request for consideration of and 
decision upon the question whether motions to dissolve 
trade-mark interferences shall be determined by the Ex- 
aminer of Trade-Marks or by the Examiner of Interfer- 
e nces . 

A motion for dissolution was made in the present case, 
and the Examiner of Interferences considered and decided 
it. He was of the opinion that the matter was one to bo 
decided by him and that the act of February 20, 1905, 
does not call for or permit the transmission of such motions 
to the Examiner of Trade-Marks for decision. 

Section 7 of the act of February 20, 1905, contains the fol- 
lowing provisions: 

Whenever application is made for the registration of a trade- 
mark which is substantially identical with a trade-mark appro- 
priated to goods of the same descriptive properties, for which a 
certificate of registration has been previously issued to another, 
or for registration of which another has previously made applica- 
tion, or which so nearly resembles such trade-mark, or a known 
trade-mark owned and used by another, as, hi the opinion of the 
Commissioner, to be likely to be mistaken therefor by the public, 
lie may declare that an interference exists as to such trade-mark, 
and in every case of interference or opposition to registratioh ho 
shall direct "the Examiner in charge of interferences to determine 
the question of the right of registration to such trade-mark, and 
of the sufficiency of objections to registration, in such manner and 
upon such notice to those interested as the Commissioner may 
by rules prescribe. ' 

The Commissioner may refuse to legister the mark against the 
registration of which objection is filed, or may refuse to register 
both of two interfering marks, or "may register the mark, as a 
trade-mark, for the person first to adopt and use the mark, if 
otherwise entitled to register the same, unless an appeal is taken, 
as hereinafter provided for, from his decision, by a party inter- 
ested in the proceeding, within such time (not less than twenty 
days) as the Commissioner may prescribe. 



JJ, 



/ 






It is to be noted t'n:il in case of interference the Exam- 
iner of Int-rfercnces is "to determine the question of the 
right of registration to such trade-mark," and the question 
is raised whether this includes more than a determination 
of the question of priority of adoption and use of the mark 
in issue-in other words, whether the statute requires 
that he shall determine the question whether the two 
marks in fact conflict and shall determine the question 
whether there is, aside from the question of priority, a bar 
to the registration of either or both of the marks. 

It is perfectly clear that a trade-mark interference is to 
be declared only where there are conflicting claims made 
to the same trade-mark right which is regarded as regis- 
trable, and the question to be determined is which of the 
parties has title and is entitled to registration. The inter- 
ference is declared simply to enable the parties to present 
to this Office the evidence, upon which it may base its ad- 
judication of the conflicting claim of title. The only.con- 
flict is as to title, and the only thing to be.decided as be- 
tween the parties is title. 

If there is no real conflict between the claims of the par- 
ties or if the mark claimed is not a registrable trade-mark, 
there can be no proper interference. In such ease the im- 
properly-declared interference should be dissolved. 1 here 
is no go-od ground for rendering judgment^ favor of one 
party or the other, and it seems clear that no adjud.cation 
•of the contest between the parties can be made without de- 
ciding in favor of one'party or the other. 

It must be held that the words " to determine the ques- ! 
tion of the right of registration to such trade-mark" mean 
that the Examiner of Interferences is to determine the 
Kght of registration as between the parties to the interfer- 
ence. In other words, he is to determine the question of 
title or ownership as between those parties. 

The Examiner of Interferences may !3y analogy to the 
patent practice (Rule 126) call attention to the fact that m 
bis opinion a particular interference was improperly de- 
c-hired; but it is not believed that the statute contemplates 
that his actual decision in the case shall relate to anything 
lave ttic fektive rights of the parties involved. 

In considering the law it has not been overlooked that 
the last paragraph of section 7 provides that the Commis- 
sioner "may refuse to register both of two interfering 
marks." It is not understood that this means that the re- 
fusal of both marks is to be made a part of the adjudica- 
tion in the interference. It seems to mean merely that 
this Office is not compelled to register a mark simply be- 
cause an interference has been declared or conducted in re- 
gard to it. In other words, registration may be refused to 
the successful party to the interference if good reasons ex- 
ist, or I lie interference may be dissolved and both appli- 
cants may be refused registration without deciding the 
question of priority of adoption and use. 



The conclusion of the Examiner of Interferences that 
motions for dissolution should be decided by him is based 
upon his finding that the law imposes upon him the duty 
of deciding not merely the question of priority, but all 
Other questions relating to " the right of registration." As 
above stated, it is not believed that the law has such mean- 
ing; but even if it had the conclusion would not follow that 
the Examiner of Interferences is to consider and decide 
preliminary motions for dissolution. The decision of such 
matters when he comes to rerider his final decisidn in the 
case in the light of the evidence presented would be a very 
different thing from deciding in advance whether there shall 
be an interference. He of course cannot declare interferences 
in the first instance, since he does not examine all trade-mark 
applications and is not aware of the various conflicting ap- 
plications which are filed. The Examiner of Trade-Marks 
is obviously the one to decide in the first instance whether 
or not there is an actual conflict between applications 
which are otherwise allowable and to declare interferences 
where necessary. No contention is made that the law pro- 
hibits such action by the Examiner of Trademarks; but, 
on the' Contrary, it clearly contempletas that he shall take 
such action. A motion for dissolution of an interference 
before the taking of testimony is, in effect, a request for re- 
consideration of the action declaring the interference. 
Since the Examiner of Trade-Marks declared the interfer- 
ence, he is the one who should give the reconsideration in 
the light of argument by both parties. The Examiner of 
Interferences is in no sense an appellate tribunal, and to 
have him re-vioW the action of the Examiner of Trade- 
Marks in the light of the same evidence would lead to hope- 
less confusion. The declaration and the motion are both 
preliminary matters, and it may be said that the interfer- 
ence is not finally declared until the time for motions for 
dissolution has expired. In other words, the Examiner of 
Interferences does not take charge of and conduct the in- 
terference proceedings until the Examiner of Trade-Marks 
has declared the interference and reconsidered his action 
inter paries if requested to do so by motion made within 
the definite time allowed. 

Since there is nothing in the statute to prevent the con- 
sideration by the Examiner of Trade-Marks of motions for 
dissolution, the question whether they shall be considered 
and decided by him or by the Examiner of interferences is 
to be determined by considerations of good policy. For the 
reasons above stated it is deemed best to have such mo- 
tions decided by the Examiner of Trade-Marks. 

It is held that hereafter preliminary motions to dissolve 
interferences should be transmitted by the Examiner of In- 
terferences to the Examiner of Trade-Marks for decision. 




9 o^e 







Ex P a -ok E B'e c k e t t . 
Decided October I.',, 1905. 

. TaADH-MiRXa— REGI3TKATI0K ABROAD-CERTIFIED CarV 5' 
QUIRED. , i - "-■ ■ r 

W hers application is mads 1 y a foreig isr for-the-registration 
ol a trads-mark on the ground thro ii. has r;en registered in the 
•- . jspuntry where he resides, He« that a certified copy ojLibi&tor- 
cign registration should be furnished. 

-. SAME-SAME-SAME-APPLICANT'S JUDSMENT XOT ACCEPTED. 

Tne mere allegation^! the applicant that he has secured for- 
eign registration is insufficient, since the question of identity 
of marks is one requiring^ exercise of judgment, and the stat- 
ute requires that thispffice shall determine the right to regis- 
tration. It should not accept without question the applicant's 
judgment, but should call for the facts upon which it is based. 
On PETITION. 

TRADE-MARK FOR BAKING-POWDER. £J Jjj £gg 

Mr. George B. Hamlin for the applicant. § • §§ , 

Allen, Commissioner: 

This is a petition from the action of the Examiner of 
Trade-Marks requiring that the applicant file a certified 
copy of his mark as registered in Canada. 

In the affidavit forming part of the application it is 
alleged that the applicant has registered the mark in Can- 
ada, and the date and number of that registration are 
given. The affidavit, furthermore, does not state that the 
mark has been used in interstate commerce or in com- 
merce with Indian tribes or in commerce between the 
United States and foreign nations. The application] is 
therefore based upon the following provision in section 2 
of the Trade-Mark Act of February 20, 1905: 

If the appUcant resides or is located in a foreign country, the 
statement required shall, in addition to the foregoing, set "forth 
that the trade-mark has been registered bv the appUcant, or that 
an application for the registration thereof has been filed by him 
in the foreign country in which he resides or is located, and shall 
give the date of such registration, or the application therefor, as 
the case may be, except that in the appUcation in such eases it 
shall not be necessary to state that the mark has been used in 
commerce with the United States or among the States thereof. 

The question for determination here is whether this 
Office is justified in requiring that a copy of^the foreign 
registration be filed, so that it may be compared with the 
application here and with the applicant's statements. 
The statutes do not specifically require the filing of a cer- 
tified copy of the foreign registration, and the question for 
determination is whether by necessary inference they con- 
template the filing of such copy and justify this Office in 
calling for it. 

Section 6 of the act of February 20, 1905, requires this 
Office to determine whether or not "the applicant is en- 
titled to have his trade-mark registered," and it is clear 
that in the present case the right to registration depends 
upon the question whether the mark was registered in 
Canada, as alleged. The best evidence of the fact is a certi- 
fied copy of the registration. Section 4 of the Trade-Mark 
Act furthermore gives to the application here the same 
force and effect that it would have if it had been filed here 
on the same date that the Canadian application was filed. 
It seems clear that Congress could not have intended that 
this Office should give such effect to the filing of the Cana- 
dian application without having before it some evidence 
of the fact besides the applicant's statement. 

The question of the identity of two marks is often one 
upon which parties may well differ, and therefore it is not 
believed that this Office should accept without question 
the applicant's judgment in the matter. The Examiner 
states that many cases have been brought to his attention 
where the applicant alleged registration abroad and it ap- 
peared upon comparison that the marks were different or 
that the goods to which the mark had been applied were 
different. 

It is no particular hardship to require the applicant to 
file a certified copy of the foreign registration , and since this 
Office is called upon to determine the applicant's right to 
registration it is not unreasonable to require him to pre- 
sent the material within his possession upon which that de- 
termination is to be based. It must be held that the stat- 
ute contemplates and authorizes the requirement for a cer- 
tified copy of the foreign registration. ■• 
,The petition is denied, j ^ 



// t #rf-±* 



-z— 



/3c% 



Ex parte The Cuas. H. Pnnxips Chemical Co. ( 

Decided October 2B, 1905. 

1. Trade-Marks— Rejection;— More Than One Class of 

Goods. 
Held that registration was properly refused where the appli- 
cation described the mark as appUed to various articles'which 
are not j)f substantially the same descriptive properties. 

2. Same— Act 1905 Construed— Substantially the Same De- 

scriptive Properties. 
The act of February 20, 190.5, does not contemplate that a sin- 
gle trade-mark registration shall include goods which are not of 
substantially the same descriptive properties. 

3. Same— Same — Same — Single Trade-Mark Right. 

According to the provision relating to infringement "a single 
trade-mark right extends no further than to "merchandise of 
substantiaUy the same descriptive properties," and there is 
nothing to show 7 an intent to permit a single registration to in- 
clude more than one trade-mark right. , 




On appeal. 



TRADE-MARK FOR CHEMICALS. 



m '- 



Mr. Henry Connett for the applicant. 
Allen, Commissioner: j 

This is an appeal from the action of the^Examiner of 
Trade-Marks refusing registration on the ground that the 
application is not limited to goods of substantially the 
same descriptive properties and that therefore it includes 
more than one trade-mark right. 

The applicant states that the class of goods is drags and 
chemicals and gives the particular description of the goods 
to which the mark has been applied as follows: 
* * * a magnesia preparation an acid phosphate, a syrup of 
phosphates, a quinin compound, a cod-Uver-oil emulsion, and 
camphor. ...... ..:s- 

It is very clear that the goods here described are not of 
substantially the same descriptive properties, and the ap- 
pellant makes no argument tending to show that they are. 
It merely points out that they belong to the one general 
class of drugs and chemicals and argues that there is noth- 
ing in the act of February 20, 1905, to require limitation to 
goods of substantially the same descriptive properties. It 
contends that it is entitled to include in one registration all 
goods upon which it has used the mark, provided that they 
come within one general class of merchandise. 

A question like that in the present case was presented 
for consideration and fully discussed in the case of ex, parte 
Faxon, (103 O. G., 891.) The discussion there was of the 
law of 1S81, and the reasons why each application must be 
confined to goods of substantially the same descriptive 
properties were fully stated. Those reasons are equally 
applicable to the act of February 20, 1905. Section 16 of 
that act limits the right of the registrant in the matter of 
infringement to those persons who use the mark upon 
"merchandise of substantially the same descriptive prop- 
erties." Congress has thus defined the scope of each 
trade-mark right, and there is nothing in the act of Feb- 
ruary 20, 1905, to show an intent to permit a single regis- 
tration to include more than one trade-mark right. 
Tne decision of the Examiner of Trade-Marks is affirmed. 



/ J I 



// f. *?-ft f 



Ex parte "American Separator Compact. 
Decided October %4, 1005. 
Trade-Marks— Eight to Amend Applications Under Act 
1881— R ejection— Appeal. 
The refusal to permit the amendment of an application under 
the act of 1881 to bring it under the act of 1905 is a rejection of 
the application and appealable. It will not be reviewed on in- 
terlocutory petition. 

0.\ PETITION. , j 

gNKg trade-mark ror. centriftcal machines. '~ 

Mr. Harold SerreU for the applicant. 
Allen- , Commissioner: 

Tiiis is a petition from the~action of the Examiner of 
Trade-Marks holding that the applicant is not entitled to 
amend the above-entitled application filed under the act of 
1881 to bring it under the act of February 20, 1905. 

In the case of Mark Cross] Company (116 O. G., 2534) 
the Examiner refused to permit the amendment of an ap- 
plication to bring it under the act of February 20, 1905, 
and the court of appeals said: 

* * * the action of the Examiner was in effect a rejection of 
th? application upon the ground that it was not an application 
filed under the act of 1881 such as could be further prosecuted. , 

The court therefore held that the applicant's remedy 
was by appeal. In view of that ruling ':t must bo held that 
the present applicant's remedy is [by appeal and [not by 
interlocutory petition. This petition isaccordingly ^dis- 
missed. 




EX PARTEEl^fAN MOX/CCI. 



'Company. 




Decided October 30, 1005 
Trade-Marks-Drawing Must Conform to Specimens. 

The drawing of a trade-mark application should show the 
mark as actually used and should therefore correspond with the 
specimens filed. 
" Svme— Same-Right Determined by Use. < . 

The right to the exclusive use of a trade-mark is acquired only 
by actual use, and registration is simply a recording of that 
right. The record or registration must therefore be of .the par- 
ticular mark just as it has been used. 

3 S 4ME-SAME-RIGHT NOT VARIED BY REGISTRATION. 

' The scope of the trade-mark right which the applcant posi- 

eWs'caa be neither broadened nor limited by the form ot the 

application for registration. The law does not create the right, 

feuVsimply provides for its registration. 

i. SAME-SAME-CONSTRVCTION OF TRADE-MARK RIGHT FOR 

Om" and variations from the mark « actually used in- 
tended for the purpose of fixing or varying the construction to 
be Ic d upon tS trade-mark right which has been acquir d 
arc not pcrniissible. The construction placed upon Jfce nght 
must be determined by the courts from a consideration of the 

mark as actually used. ■.-._: ■ ' ; 

t>N PETITION. — » 

TRADE-MARK FOR WrTEAT-FLOUR. i i 

Mr. B. E. Gunckel for the applicant. ..J 

Allen, Commissioner: _ 

This is a petition from the action of the Examiner of 
Trade-Marks requiring the applicant to show its mark in 
its drawing precisely as it is used upon the goods. 

The petitioner lias filed specimens of its mark as used, 
and its drawing does not correspond therewith. The Ex- 
aminer says: 

Avs&Bsa&ssas&ii 

trate or describe the same. . , ,i,. OTU . 

The mark is applied to flour, and, as shown in the diaw- 

ing, consists of the words "Listman's Best" printed in 
ordinary type. It is very clear that those words do riot 
constitute a technical trade-mark and would not be regis- 
trable in this Office except for the following provision m 
section 5 of the act of February 20, 1905: 



The applicant has made affidavit tooths Actual and ex- 
clusive Use here referred to and has therefore brought his 
application under this "ten-years" clause. 

The specimens show an ornamental broken circular bor- 
der printed in blue, the word "Listman's" printed in red 
in the arc of a circle within the upper part of the border, 
fcfie number "49" in red on a straight line below the word 
"Listman's," the word "Best" in large red letters straight 
across the center, the words "Fancy Spring Wheat Flour" 
in smaller blue letters immediately below the word " Best," 
the words "Listman Mill Company" in blue below the 
above-mentioned words, and the words "La Crosse, Wis." 
printed in blue on the arc of a circle within the lower half 
of the border. 
/ Under well-settled principles of trade-mark law what- 
ever right the applicant has acquired to the exclusive use 
of its mark it is based solely upon the actual use of it as 
shown in the specimens. The only way in which a trade- 
mark right can be acquired is by actual use, and therefore 
^Siirid KetUiSh requfrfes tliat the' niark tie registered as used: 
The trade-mark law does not create the trade-mark right, 
but merely provides that it be recorded or registered in 
this Office. Registration necessarily implies that the 
record shall conform to the original. 

The requirement that the drawing show the mark as used 
does not result in limiting the applicant's protection be- 
yond the bounds of the right acquired By actual use 'of trie 
mark, as the applicant seems to suppose. On the con- 
trary, it fixes with definiteness and accuracy the appli- 
cant's rights without extending or limiting them. This 
Office is not called upon to pass upon the scope of the ap- 
plicant's trade-mark right and determine what would be 
the equivalent of its mark. It should register the mark 
which the applicant has used and to which it has acquired 
title, leaving it to the courts to determine the breadth of 
the right acquired and the question of equivalency. y^ 

That the applicant is seeking by the form of its applica- 
tion to vary or fix the construction to be placed upon the 
trade-mark right which it has acquired by actual use 
seems apparent from its argument. It is said in the brief: 

* , * * let it be assumed that applicant had complied with the 
r'equiirerrteut ; and had obtained registration of the words "List- 
fnaiv'8 Best," iri fed color, the word "Listman's" being arranged 
m an arc above the word "Best," and in type of the style shown 
in the specimens. 

If suit were brought for infringement of the registered mark 
against a competitor whose brand consisted of the same words 
printed in yellow color, in different type, and arranged diago- 
nally on the brand; would it not be a good defense to contend that 
the registration was limited to the one color and to the particu- 
lar arrangement of the words and the style of the letters? 

' Without undertaking to answer this'question it may be 
said that if there was no infringement in such case it would 
be because the right acquired by actual use was not suffi- 
ciently broad to include the supposed infringing mark. If 
the supposed infringing niark so nearly resembles the mark 
actually used as to entitle the first user to protection under 
principles of common law, it would entitle him to protec- 
tion under the registration which accurately shows his 
mark. If he is not entitled'to such protection under the 
common law, he cannot acquire the right by the form of his 
registration, for, as above stated, the registration does not 
confer the right, but merely records it. 

The requirement for accurate illustration of the mark as 

ised is particularly necessary in the'ease of marks regis- 

ered under the "ten-years" provision of the law. The 

'•ovision for registration under that section of jnarks 

iich are not technical trade-marks seems to have been 

)d upon the doctrine of unfair competition in trade, 

in applying that doctrine the exact appearance of the 

k is an essential thing to be considered. 

e petition is denied. 



*"— ■ 



predecessors from whom he derived title foi ten years osn 
ceding the passage of this act. 



ftp 



OOMMISSIONEE'S DECISIONS, 

Walter Baker & Company, Limited, v. Hawley Mb 
Hoops. 

Decided October 31, 1905. 

1. Trabe-Marks— Publication Before Interference. 

The publication of trade-marks under section 6 of tho act of 
1905 should precede the declaration of interferences in regard to 
them. 

2. Same— Same— Registrability of Mark:. 

The provision in section 6 of the act of 1905 that publication 
is to occur when it appears "that the applicant is entitled to 
have his trade-mark registered" does not preclude publication 
whore- two parties claim the mark and an interfcrenpe is nec- 
essary. The provision means that the mark is regarded as reg- 
. istrable except for contests, 

3. Same— Publication— Right to Registration Not Settled. 

The publication of a mark does not necessarily mean that it 
^ will be registered to the applicant, since his right to registration 
depends upon the result of contests which may be conducted 
thereafter. 

i. Same— Same— Piecemeal Contests to be Avoided. 

The publication of trade-marks is for the purpose of permit- 
ting contests as to the applicant's right to registration, and it is 
to the interest of applicants, as well as this Office, that all con- 
tests be conducted at once instead of piecemeal. 

On reference. 

trade-mark for cocoa, etc, 

Messrs. Putnam db Putnam for Walter Baker & Com- 
pany. 

Messrs. Knight Bros, for Hawley and Hoops. 
Allen, Commissioner : 

The above-entitled case has been referred to me for con- 
sideration of the question whether it is proper to declare in- 
terferences in trade-mark cases prior to the publication of 
the marks in the Official Gazette under section 6, act 
of February 20, 1905. 

The 'present interference stands suspended foi\the pur- 
pose, of consolidating it with an opposition filed by Walter 
Baker & Company to the registration of a mark by Hawley 
and Hoops which was recently published. The interfer- 
ence and opposition are closely related, and the Office con- 
cluded that time and trouble would be saved by consoli- 
dating them for the purpose of taking testimony. On be- 
half of Walter Baker & Company it is asked that its mark 
also be published before conducting the interference which 
has been declared, so that others who may wish to contest 
the right to registration will have an opportunity to come 
forward and take part in the proceedings. It is urged that 
the Office should not first conduct a contest between two 
parties and then publish the successful party's mark with 
the idea of permitting others to contest it. 

It is of course obvious as a general proposition that it 
would be to the interest of this Office, as well as of the ap- 
plicants, to have all contestants appear and take part in 
one proceeding rather than in successive proceedings. 
Piecemeal disposition of contests of this kind would be 
burdensome upon the parties and upon this Office. Such 
piecemeal consideration should be avoided unless tho diffi- 
culties and objections to the proceedings necessary to bring 
in all parties at once are such as to make it impractical 
and unless the statute itself makes it necessary to conduct 
all interferences found to exist before publishing the mark 
with a view to other possible contests. 

Section 6 of the act of February 20, 1905, provides for 
the examination of trade-mark applications and says : 
. * * * if on such examination it shall appear that the applicant 
is entitled to have his trade-mark registered under tho provisions 
of this act, the Commissioner shall cause tho mark to Be published 
at least once in the Official Gazette of the Patent Office. 

The purpose of this publication is to permit opposition 
to the registration of the mark by "any person who be- 
lieves he would be damaged by the registration." If op- 
position is made, proceedings analogous to an interference 
are conducted, for section 7 of the act provides: 

* * * in every case of interference or opposition to registration 
he shall direct the Examiner id charge ol Interferences to deter- 
mine the question of the right of registration to such trade-mark, 
nml of the sufficiency of objections to registration, in such manner 
and-upon such notice to those interested as tho Commissioner 
may by rules prescribe. 






It is apparent, therefore, from the statutes that the pub- 
lication of a mark does not necessarily mean that it will be 
registered to the applicant. Registration is subject to the 
findings upon the contests wliich may be conducted there- 
after. It is apparent, therefore, that there is no underly- 
ing principle which would prevent publication of the mark 
before settling contests as to the applicant's right to regis- 
tration. 

Section 6 of the act says that marks will be published if — 

it shall appear that the applicant is entitled to have his trade- 
. mark registered. 

" It is clear from this that no mark should be published 

which would not be registrable to the applicant even in the 

absence of a contest. 

Does it mean, further, that all known contests as to the 
applicant's rights have been settled? Or does it mean 
merely that there is no bar to registration independent of 
such as may be established in contested proceedings ? The 
latter is, in my opinion, the proper interpretation of the 
statute. 

The statute contemplates the fact that there may be a 
contest afterpublication, and the fact that this Office knows 
in advance that there will be such contest furnishes no 
good reason for postponing publication. The publication 
will simply bring into the contest to be conducted all in- 
terested parties. 

In the matter of patent applications it has been the 
practice to declare interferences only where there is an al- 
lowable application "claiming the invention. In my opin- 
ion the words'" is entitled to have his trade-mark regis- 
tered," in section 6 of the act of February 20, are used in 
"the same sense as "allowable application" in the patent 
practice relating to interferences. In neither case is the 
right of the applicant finally determined, but in both it is, 
determined in his favor, subject to the conclusion in the 
'contemplated contest. 



It is held, therefore, that there is nothing in the act of 
February 20 to prevent the publication of marks before 
declaring interferences in regard to them. It remains to 
be determined whether there is any practical objection to 
such publication wliich should be regarded as having con- 
trolling force. 

Where there are. two or nWe applicants claiming sub- 
stantially the same mark and publication is made before 
interference, it would be necessary to publish all of them, 
whereas if publication was made after interference it 
would be necessary to publish only the mark of the suc- 
cessful party. So, also, where the proposed interference 
is between an applicant and a prior registrant the publica- 
tion of the applicant's mark before interference mav be 
found to have been unnecessary when the result of the in- 
terference is known, since the registrant may be the suc- 
cessful party. Another objection to publication before 
interference is that interested parties may be confused and 
misled. They may suppose that this Office, has settled all 
known controversies in the applicant's favor and is ready 
to register the mark unless some new reason for refusal is 
brought forward. 

The confusion of interested parties does not seem to be 
a vital objection, since they will soon learn the practice in 
such cases and may be informed when in doubt. Tlio ex- 
pense incident to the publications wliich may be found to 
have been unnecessary when the interference is concluded 
does not, in my opinion, warrant a postponement of pub- 
lication until after the interference. It should not be per- 
mitted to outweigh the advantage both to applicants and 
this Office in disposing of all contests at once. . 

The prior publication of marks would, of course, delay 
the declaration of interferences for the thirty days allowed 
by the statute for oppositions; but that delay is much to 
be preferred to successive contests relating to the same 
mark. 



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Standard Varnish Woees v. The David B. Crockett 
Company. 

Decided October 28, 1905. 
Trade-Harks— Interference in Fact— Difference in Ap- 
pearance. 
Held that there is no interference in fact between two trade- 
marks including a diamond-shaped figure where each^nark in- 
cludes other features which make the marks in their entirety 
present very diSercnt.appearauces. 

Appeal on motion. 

TRADE-MARK for varnishes. 

Messrs. Brown cfc Seward for Standard Varnish Works. 

Mr. F. W. Smith, Jr., for The David B. Crockett Com- 
pany. 
Aixen, Commissioner: 

This is an appeal by The David B. Crockett Company 
from the decision of the Examiner of Trade-Marks grant- 
ing a motion for dissolution by the Standard Varnish 
Works on the ground that there is no interference in fact. 

The issue is as follows: 

The figure of a boat surrounded by a diamond-shaped border 
and an exterior diamond-shaped outline, or the representation of 
a flag, a diamond-shaped figure thereon, a rhomboid within the 
diamond-shaped figure; for varnishes. 

The first part of this issue describes the mark of The 
David B. Crockett Company and the last part after the word 
"or" describes the mark of the Standard Varnish Works. 

It is noted that both marks include a diamond-shaped 
figure and both include a broad mark lengthwise within 
the figure. The similarity, however, extends no further. 
Each mark has other features which bear no resemblance 
to each other. The flag in one case finds no counterpart 
in the other, and the diamond made up of the heavy broad 
lines in the Crockett Company's case is not present in the 
mart of the Standard Varnish Works. 

While the specific differences would not be of conse- 
quence if the general effect upon the eye were stibstan- 
tially the same when the marks are viewed in their entirety, 
they become material when they make the marks in their 
entirety present decidedly different appearances. In the ' 
present ca c - he marks are, in my opinion, so different that 
there is no likelihood of confusion in the trade. 

very pronounced, even 
wheri . linbl ad white on the 

Patent DIE Imorepr aotmoed 

when ' marks as used are considered. 

Li tl": ipeeimen i hied by the Crockett Company the heavy 
diumoad and the boat arc printed in red, whereas the mark 
of tl lord Varnish Work.: is printed entirely in black. 

The Examiner was right inholding that there is no inter- 
ference in fact, and his decision dissolving the interference ! 
is affirmed. 



//T 






V lo if- 







Ex parte The Stab Distillery Company. 

Decided October 31, 190S. 

1. Trade-Marks— "Star" for Whisky— Anticipation. 

A trade-mark for whisky including as an essential feature a 
star Held not registrable in view of prior marks including stars 
registered under the acts of 1870 and 1SS1. 

2. Same— Anticipation— Effect of Eegistrations Under Act 

of 1870. 
While the Trade-Mark Act of 1870wasinvalidandregistrations 
tii&reunder furnished no protection to the registrants, such reg- 
istrations constitute some evidence of ownership and may be 
used by this Office as references until overcome in some way by 
the applicant. 

3. Same— same— Eegistrations Under Act 1881 as Refer- 

ences. 
Eegistrations under the act of 1881 are not rendered invalid 
by the act of 1905, and therefore they constitute prima facie evi- 
dence of ownership. They constitute valid references for appli- 
cations for registration now filed. 

On appeal. 

trade-mark for whisky. 

Mr. Alfred Bellman for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register as a trade-mark for 
whisky a mark described as follows: 

The representation of a star, with a circular baud interlaced 
with the points of tho same,. associated with the words "Star 
Distillery." • ■ • 

The refusal of registration was based upon the ground 
that the appellant's 1 mark so nearly resembles prior known 
marks as to be likely to be mistaken therefor by the 
public. The prior known marks to which reference is. 
made are 'as follows: IL Livingston, May 20, 1873, No.. 
1,279; Derby & Day; September 9, 1873, No. 1,443; W. H. 
Livingston, July 12, 1881, No. 8,451; W. L. Home, No- 
vember 5> 1889, No. 17,166; Large, Jr., & Rensiehausen, 
August 11, 1891, No. 19,997; Rowland, Raphael & Co., 
August 13, 1872, No. 954; C. F. Eblen, July 24, 1877, 
No. 4,936; C. Amsinck & Co., March 16, 1886, No.13,103; 
Belmont Distillery Co., December 25, 1888, No. 16,119; 
Daniel V. B. Henarie, January 9, 1894, No. 24,021; Mar- 
tin Manning, May 29, 1894, No. 24,782. 

In the appeal it is said that the applicant does not " base 
this appeal upon any question of priority." It may be as- 
sumed, therefore, for the purposes of this case that the 
dates of the references are prior to the date of adoption 
and use of the mark by the present applicant-. 

The grounds of appeal are stated as follows: 

First, that as regards one of the aforesaid marks, namely No. 
17,166, even were the marks identical, there would not be such in- 
terference or infringement as to justify 'a refusal of registration. 

Second, that registration under the lawof 1005 ought not to be 
refused by reason of any registrations under the laws of 1870 and 
18S1, and 

Third, that our mark is not so similar to any of the~aforesaid 
marks as to be identical with it, or so nearly resemble it as to be 
likely to cause confusion or mistake in the mind of the public or to 
deceive purchasers. 

As to the first ground, it is alleged that Home's registra- 
tion, No. 17,166, is not sufficiently definite to anticipate this 
appellant's mark for whisky, since the registered mark is 
said to have been used upon "alcoholic and fermented 
beverages." Whisky is of course an alcoholic beverage; 
but specific mention of whisky is not made in the registra- 
tion. 

The first question to be determined is whether registra- 
tions Under the act of 1870 and under the act of 1881 con- 
stitute' such evidence of existing marks as warrants the re- 
jection of ; an application under the act of February 20; 
1905, where tho marks disclosed are substantially the 
same. 

The act of 1870 was declared unconstitutional by tho 
Supremo Court, and consequently registrations thereunder 
were invalid and furnished no protection to the parties se- 
curing them. They constitute publications, however, in 
which the registrants made public claim and affidavit to 
ownership of the marks disclosed therein. They made 
that "claim," lurtheimore, before the {««£»* applicant en- 
tered the hold and long before it made claim to ownership. 
While those registrations do not constitute legal proof of 
ownership, they constitute evidence, and it is believed that 
this Office is warranted in accepting it as making out a 
prima facie case until overcome in some way by the appli- 
cant. The court of appeals said in re Drawbaugh, (77 
O. G- , 813Q 



Confined tn t^l ', aCt i' * he ° mda,S ° f th<? Pat0Ut 0IT ' '- '"'•■ "'•■* 

oT?M?ti™ technical evidence, such as may be required in a court 
?.',?,;,, ™? may , res °. rt ..and do constantly resort, to Offi- 
iW,w J Jri s journals of science and art, and to books and pub- 
enfilb?^ ti ^ n « s aI ? d descriptions for information that may 
P-, w n<S v ln , - the f "^estigations, as well as to the flies of the 
,,; -i £ . c ti tsBh - An y source which brings to them intelligence 
and ™Sft!A ey . can f "asonably and safely let, may be consulted 
and made the basis of then-judgment. 

Registrations under the act of 1881 are not rendered in- 
valid by the act of February 20, 1905, and therefore those 
registrations under express provision of law constitute 
prima facie evidence of ownership in the registrants. 

It must be held, therefore, that the- references cited con- 
stitute bars to the registration by tin's appellant of similar 
marks. The only question which remains is whether the 
appellent's mark so nearly resembles those prior marks as 
to mislead the public. 

• The appellant's goods will undoubtedly be known as the 
"star" whisky or the "star- brand" whisky. 
! The mark registered by Rowland, Raphael & Co., No. 
954, consists of a star having a monogram thereon. That 
registered by Livingston consists of the words "Golden 
Star." That of Derby & Day consists of a star surrounded 
by a heavy ring. Eblen's mark, No. 4,936, consists of a 
star with the head of a buffalo thereon. The mark of Am- 
sinck & Co. is described as follows: 
the tetter "A^ consists o£ ths fi g ur e'of a star having within it 



// 



9 '■*&. 



Martin & Bowne Company 

Decided October Si, 1905. 

1. Trade-Masks— Notice op Opposition Must Be Signed by 

Party Damaged. 
The notice of opposition to the registration of a trade-mark 
must be signed and sworn to by the one who would be damaged 
by the registration. 

2. Same— Same— Notice and Oath Cannot be Signed by At- 

torney. 
The notice of opposition to the registration of a trade-mark 
cannot be signed and sworn to by the attorney for the party who 
would be damaged, since the statute requires the personal oath 
of the party himself. 

3. Same— notice op Opposition by attorney— Ratification 

by Principal 
Where notice of opposition to the registration of a trade-mark 
was filed by the -attorney and after the thirty days allowed by 
the statute the principal filed a paper attempting to ratify the 
attorney's acts, Held that the opposition will be dismissed. 
i. Same— Extension op Time for Opposition— Jurisdiction 
op Patent Office. 
This Office has no jurisdiction to extend the thirty days al- 
lowed by statute for oppositions to the registration of trade - 
• marks, and therefore excuses for delay beyond that period are of 

no effect. 
5. Same— Notice op Opposition— Sufficiency op Notice. 

Where the notice of opposition alleges adoption and use of the 
mark before the applicant company|was incorporated and alleges 
that the mark has not been abandoned and that the opposer is 
still the owner, Held sufficient in subBtance to call for an answer 
by the applicant. 

On appeal. 

trade-mark for TOOTH-BRUSHES£ETC. 
Messrs. Dunn, & Turk for Martin & Bowne Company. 
Mr. Joseph L. Levy and Mr. Howard A. Coombs for 
Martin. 

Allen, Commissioner: *"■ 

This is an appeal by William L. Martin from the decision 
gf tire Examiner of Interferences granting a motion by 
'Martin & Bowne Company to quash Martin's notice of op- 
position to the registration of the word "Marguerite" as a 
trade-mark for tooth-brushes, etc. 
,» Notice of the application of Martin & Bowne Company 
was published in the Official Gazette of May 16, 1905, 
s ;and within the thirty days fixed by law notice of opposi- 
tion theretb.waffiledy sighed' by Joseph L. Levy as attor- 
ney for William L. Martin. Levy made the affidavit ac- 
companying the notice of opposition upon information 
and belief and therein alleged that Martin was in Europe. 
Martin is the only one who is claimed to have an interest 
such as entitled him to oppose the registration. Qn July 
11, 1905, after the thirty days allowed by statute had ex- 
pired, William L. Martin filed a paper appointing Levy his 
attorney, and saying: 
iJlt* * * kw^oonfinnftUoflu's acts made herein in my be- 




On behalf of the Martin & Bowne Company motion was 
made to quest the opposition, and the Examiner of Inter- 
ferences granted that motion, saying: 

The notice of opposition is dismissed for the reason that it was 
not verified b v the party filing itas required by the statute, and for 
the further reason that it does not set forth grounds that would 
warrant the refusal of the Martin apdBpwne Company's applica- 
tion for registration. ■*** 

Considering first the sufficiency o(. the allegations in the 

Notice of opposition, it appearsj|ferefrom that William L. 

Martin is president of Martin jb Bowne Company. 



2. That 
Co 



prior to the incorporation of the said Martin & Bowne 
the said Wm. L. Martin had adopted and used the word 
Marguerite" as a trade-mark for tooth-brushes and other toilet- 
brushes, and had registered the same. ~" ._ 

3. That the said William L. Marfan has not abandonedlhis ex- 
clusive ownership of the word "Marguerite" as a trade-mark for 
toileMjrushes; and is now the owner of the legal title thereto. 

It is urged, first, that the allegation of adoption and use 
before the incorporation of Martin & Bowne Company is 
insufficient, since that corporation may have derived title 
from some one who used the mark before that time. While 
it may be true that the corporation is the successor in busi- 
ness of a prior user, and thus derived valid title, notwith- 
standing the allegations by Martin, it is not believed that 
this Office would be Justified in assuming such to be the 
fact in the absence of proof. In other words, the corpora- 
tion may, if the facts warrant it, confess and avoid the al- 
legations made by Martin. It may have a valid defense 
to the allegations; but it by no means follows that it is re- 
lieved of the necessity of alleging and proving it when[that 
Hefense is not shown and established by the record. 

It is further contended that the allegations thatj Martin 
has not abandoned the mark and is still the owner state 
conclusions of law and not the facts upon which they are 
based and that therefore they are insufficient. This con- 
tention cannot be sustained. The allegations are,madfc in 
connection with the definite allegations, of facte in regard 
to adoption an'd use by which' title was acquired. They 
wtaSttute sufficiently definite allegations of fact without 
including a statement of the steps taken in retaining and 
preserving the title which was acquired. 

It must be held that the Examiner was wrong in holding 
that the allegations in the notice of opposition were insuf- 
ficient in substance. 

The fact that the notice of opposition was not signed 

and verified by the person in whose behalf it was filed is a 

vital defect which cannot now be cured and which justifies 

granting the motion to dismiss. 

Section 6 of the act of February 20, 1905, contains this 

provision: 

Any person who believes he would be damaged by the registra- 
tion of a mark mav oppose the same by filing notice of opposition, 
stating the grounds therefor, in the Patent Office withm thirty 
days after the publication of the mark sought to be registered, 
which said notice of opposition shall be verified by the person filing 
the same before one of the officers mentioned in section 2 of this 
act. 

It thus appears that the person making the opposition 
must be the one who would be damaged by registration 
and that such person milst sign and verify the notice df op- 
position. The general principle that what a patty may do 
in person he may do by agent has no application here, 
•since the statute requires the personal oath of thejparty. 
^The making of an oath to a statement of facte 'obvidusly 
cannot be delegated. It must be held, therefore, that the 
notice of opposition must be signed and verified by the 
party who would be damaged by registration. 

The paper filed by Martin attempting to ratify the ac- 
tion of Levy in filing the notice of opposition can be given 
no force or validity. Even if it would have been effective 
if filed within the thirty days allowed by statute it can 
nave no force when filed after the expiration of that time. 
There was clearly no valid notice of opposition filed with- 
in the time allowed. There was no such notice as con- 
templated by the statute,land it f s specifically provided 

therein — 

If no notice of opposition is filed within said time the Commis- 
sioner shall issue a certificate of registration therefor as herein- 
after provided for. 

The suggestion is'made that the period of thirty days is 
too short to enable parties to file notice of opposition un- 
der circumstances such as developed in this case; but if so 
the defect is in the statute. This Office has no jurisdiction 
' to extend the period under any circumstances, since it is 
1 absolutely fixed by statute. 

It must be held that the Examiner was right in dismiss- 
ing the notice of opposition because not properly signed. 



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The mark of the iSefnont Distillery Co. consists of a 
star combined with the word "Astor." That of Large &( 
Rensiehausen consists of a star and nothing else. Man-j 
ning's mark consists of a star with a monogram and shield( 
thereon. Henarie's mark consists of a star surrounded by ; 
the outline of a shield. Home discloses a star with the) 
word "Home " and the outline of the moon thereon. 

These various registrations show beyond question that 
this appellant is not the only one who has adopted a star as j 
a trade-mark for whisky. The star has been printed in 
various forms, in various colors, and with various accesso-l 
rics. It is undoubtedly true that upon close examination 
the appellant's star and accessories can be distinguished j 
from any one of the prior marks. This, however, is not 
sufficient to make the appellant's mark registrable. It 
must be so clearly distinguishable that the public will not 
be likely to be deceived, and in determining that matter it 
must be remembered that the public will not examine the 
marks critically side by side in order to discover differ- 
ences. The ordinary purchaser has fixed in his mind only 
certain predominating features of the mark^ and is likely 
to be misled by a mark having those features. The star is 
such a prominent feature, both of the appellant's and of 
the registered marks, as to constitute the thing by which 
purchasers would be likely to identify it. It is believed, 
therefore, that the appellant's mark so nearly resembles 
prior known marks as to be likely to mislead the public. 

It is to be noted that some of the registered marks men- 
tioned above were not relied upon by the Examiner of 
Trade-Marks as anticipations, although they were cited, 
the reason for not relying upon them being that their dates 
were not sufficiently early to overcome the date of use al- 
leged by the appellant. The date of use originally alleged 
was 1849; but an amendment was filed changing the date 
to 1S88, and, as pointed out in the Examiner's supplemen- 
tal statement, he now regards the references as anticipa- 
tions. 

The present application was filed under the last clause of 
section 5 of the act of February 20, 1905, and is supported 
by an affidavit alleging actual and exclusive use of the 
mark for ten years next preceding the passage of the act. 
In view of the prior registrations referred to above it must 
be held that the applicant has not had exclusive use of the 
mark for ten years. 

It is held that the Examiner was right in refusing to reg- 
ister the appellant's mark, and his decision is therefore 
aflinned. 



(j.fr^f./iLf. 



v&Ksmii c 



4Jjl(T^C^ 




United Shkt Vest Compant. 

Decided November 29, 1905. 
■ TnADE-Mjjtx Interference— Applicant Against 
tr ant— Burden cr Proof. 
Since a trade-mark registration is prima facie evidence of 
ownership, an applicant in interference with a prior registrant 
has the burdiu oi overcoming the presuniptiou in favor oi his 
opponent. btiiatsHwa 

i. Same— Same— Same— Ownership. ■- w 

An applicant in interference with a registrant must show that 
he was the first to adopt and use the mark or that the registrant 
is not now the owner by reason of his abandonment of the mark, 
3. Same— Abandonment of Mark— Temporary Inactivity. 
Where a party shows that his opponent is not actively en- 
gaged in selling goods having thereon the trade-mark, but it ap- 
pears that the inactivity covers only a fewmonths, due to busi- 
ness troubles, that the party intends to resume operations, and 
that he has on hand a stock of the goods for sale, Held that aban= 
donment of the mark is not proved; -j 

i. Interference— Testimony— Party Bound by Statements 
Of His Witness— Opposing Party. 
Where one party to an interference calls as his witness the op- 
posing party, II eld that he is bound by the testimony of the 
witness unless it is over coma by stronger evidence to the con- 
trary, 'fhe rule that the unsupported testimony of a party is 
insufficient does not apply, 
5. Same— Same— Right to Take Rebuttai Evidence. '""'"^ 
Where ths senior party takes no testimony, the junior party 
cannot take testimony in the time allotted to hira for rebuttal, 
since there is nothing to rebut. Testimony so taken in this case 
for the purpose of strengthening the direct proofs refused con- 
sideration. , ^ 

Appeal from the Examiner of Interferences. *& 4 
trade-mark for dry goods. :- n 

Messrs. Wiedersheim <fe Fairbanks for Goldsmith. 

Mr. Charles H-. Roberts for United Shirt Vest Company* 
Allen, Commissioner: 

This is an appeal by Goldsmith from the decision of the 
Examiner of Interferences adjudging that the United 
Shirt Vest Company was the first to adopt and use the 
trade-mark id controversy and is the owner of that mark. 

The issue is as follows: 

The hyphenated word " Keep-Kool " as a trade-mark for vests 
or shirt-vests. 

The mark was registered by the United Shirt Vest Com- 
pany on September 2, 1902, and it is not claimed that Gold- 
smith adopted and used the mark until September, 1904. 
Under the express provision of the statute the registration 
of the mark by the United Shirt Vest Company cbnstitutijjf 
prima facie evidence bf B^shership; ft is 'clear; therefor^- 1 "" 
that Goldsmith can prevail here only by showing that the 
United SHirt Vest Company was not the owner and was 
not entitled (to registration or that it has abandoned the 
mark and was not the owner at the time that Goldsmith 
began to use it... ,, 

It is not denied that the United Shirt .Vest Company 
adopted and uied trie mark, and there is no evidence in the 
case upon which to base such denial. The whole case here 
turns upon the question whether or not the United Shut 
Vest Company abandoned the use of the mark after adopt- 
ing and using it. . Si 

The contention on behalf of Goldsmith is that the United 
Shirt Vest Company stopped using the mark and gave up 
the business of selling the goods to which it is supposed to 
have been applied as early. as- the summer bf..,l'9G4. It is 
therefore urged tat&t the marl: was abandoned and that 
Goldsmith acquii" ;! v£.hd titte io it ?/hen ho began using it 
in September, 1904. 

To show abandcsmontj'0oldsaiith called as his witness 
Bovee, president of the Urjltsd Shirt Vest Company. Bo- 
vee said that at the time he wo testifying, March, 1905, 
his company was not makirg and was not actively selling 
the shirt-vest3 to vLicI. the tradi-;a>ark was applied and 
that this condition hftd ;olL'.ci:3 vsMee'the summer of 1904. 
He further said that the cornpany iiitehdod to resume ac- 
tive business and that it then had on hua.l about oas h aa- 
drtd dozen shirt-vests which i» intended to soil.. , 

While the testimony a; ihia witness she ni j cession of 
iacti/e operations, it does noi show ^u inttntiqn tc abandon 
the business and permanently retire from the Said, lie 
expresiiy says that tha intention vras to resume- 
just 2c. co: ii f.s I can Bed a IccanBn . here I . m n&t bothered 
with any strikes. 



There is much controversy as to 'he weight which should 
be given to the testimony of this witness Sovee. He was 
called by Goldsmith; but he was president of the opposing 
corapr ny and testified under subpoena. 

The contention of counsel for Goldsmith seems to bo that 
his testimony should be accepted where he makes admis- 
sions against interest and should be regarded^as insufficient 
to establish allegations which tend to siippBtt bis side of 
the case unless corroborated. I cannot accept this view 
of the law. The witness was called by Goldsmith, and he 
is as much bound by his testimony upon one point as an- 
other. It is not intended to rale that Goldsmith was 
bound to accept the testimony in the sense that he could 
not call witnesses to contradict it; but it seems clear that 
having called the witness he is bound to accept what he 
says until he presents some stronger evidence to the con- 
trary. 

A controversy has arisen in this case as to certain addi- 
tional testimony taken by Goldsmith with the purpose of 
showing abandonment of the mar!: in issue. That testi- 
mony is known as the "Salisbury testimony" and was 
taken by Goldsmith d'iring the time allotted to him for tak- 
ing rebuttal eyidsneo. lis United Shirt Vest Company 
took no testimony, and fcherefese it v/as held by tie Exam- 
iner of Interference thai GoiJbiiiilh had no ri^ht to tsjzs 
rebuttal testimony. It seems clear that this ruling was 
right and that the Salisbury testimony should not be con- 
sidered. There was nothing for Goldsmith to rebut, and 
the evidence was obviously presented in the effort to 
scrsngtLin the shev/ieg raids in hie prima foci? evidence. 

It must be held that the failure of the United Shirt Vest 
Company to engage actively in business during fchq eern- 
paratively short period covered by the ev:i^r_„e 'a not suf- 
ficient ta.sh.ow an-iotfeMilMi to abandon the ;rad>2nark and 
the business. 7,'koE fcaSsn in ecr_i:„on v/ii Bovee'J 
positive statemeai ffisst & intended to reeaxne active opera- 
tions and continue in business ar:d with the farther state- 
ment that the company had on hand for sale many shirt- 
vests, it is clear that there v/as no abandonmerit of the 
trnd-.-3ii.vrk light by the United Shirt Vest Company. As 
abjve stated, the burden was upon Goldsmith to show 
abandonment, and since he has faded the decision must 
be againat him. 

The decision of the Examiner ox Interferences is affirmed. 



Kops Brothers v. Royal Worcester Corset Company 

Decided November 23, 1905. 
1. Interference m fact— "Autogirdle" and "Auto-Gar^ 



There is such close resemblance between the trade-marks 
"Autogirdle" and "Auto-Garter" that the purchasing public 
is likely to be deceived, and therefore there is an interference in 
fact. 

2. Same— Appearance and Sound Considered— Difference 

in Details. 
In determining the question of interference in fact in trade- 
mark cases the sound of the words as well as then- appearance is 
to be considered, and it must be remembered that the purchas- 
ing public will not carefully observe details of the marks with the 
purpose of detecting differences. 

3. same— Consent of Parties to Dissolution Not Control- 

ling. 
Where two trade-marks are so nearly alike as to deceive pur- 
chasers, the interference will not be dissolved merely because 
neither party opposes dissolution. 

Appeal, on motion. ! -J 

TRADE-MARK FOR CORSETS, ETC. 

| Mr. Harold SerreU for Kops Brothers. 

Mr. John C. Dewey and Mr. Bobert P. Hains for Royal 
Worcester Corset Company. 
Allen, Commissioner: 

This is an appeal by the Royal Worcester Corset Com- 
pany from the decision of the Examiner of Trade-Marks 
denying its motion to dissolve the above-entitled interfer- 
ence on the grounds — 

(1) That the Examiner erred in holding that there is an inter- 
ference in fact between the trade-marks of the respective parties 
hereto. 

(2) That the Examiner erred in holding that the words " Auto- 
girdle " and "Auto-Garter " are the same or sufficiently similar to 
mislead. 

(3) That the Examiner erred in holding that there was no ir- 
regularity in declaring the interference such as would preclude a 
proper determination of the question of priority. 




S3& 



The issue is as follows: 

The word "Autogirdle, 
tcr, " for corsets. 



' or the hyphenated word "Auto-Gar- 



No irregularity in the declaration has been pointed out, 
and therefore the only question to be considered is that of 
interference in fact. Both parties apply their marks to 
the same class of goods, and therefore the question of in- 
terference in fact turns upon the question whether the 
mark "Autogirdle" so nearly resembles the mark "Auto- 
Garter" as to be likely to be mistaken therefor by the 
public. (Sec. 7, act of February 20, 1905.) There is un- 
doubtedly some resemblance between the marks as they 
appear to the eye, and the resemblance is very close when 
the words are pronounced. In determining the likelihood 
of confusion the pronunciation of the marks as well as 
their appearance must be taken into consideration, and it 
must be remembered that the purchasing public will not 
carefully observe the marks with the purpose of detecting 
the difference. The purchasing public does not ordinarily 
give close attention to the details of marks, but identifies 
them by their general appearance or similarity of sound. 
I am of the opinion that in the present case the marks so 
nearly resemble each other as to be likely to deceive pur- 
chasers. The resemblance is, to say the least, as close as 
that between "Gold Dust" and "Gold Drop," which were 
held by the Court of Appeals of the Ninth Circuit to be so 
nearly alike as to deceive purchasers. (N. K. Fairbanks 
y. Luckel, King & Cake Soap Co., 102 Fed. Rep., 327.) 

It is noted that the appellant here calls attention to the 
fact that Kops Brothers have made no opposition to the 
present motion for dissolution and appear willing that the 
interference shall be dissolved. It is believed, however, 
that mere acquiescence by the parties furnishes no good 
ground for dissolving an interference where, in the opinion 
of this Office, an actual interference in fact exists. 

The decision of the Examiner of Trade-Marks refusing 
to dissolve the interference is affirmed. . — .. ~j» , s 






13 







La Societe Anonyme des Mines et Fonderies de Mnc de la 

Vie ill* Montagne 



v. 



Charles H. Baxter and Others. 



In Equity, 



Blatchford, J. On the allegations of the hill, the 
plaintiffs can claim their trade -mark only for the dry white 
oxide of zinc. It does not appear that they ever sold that 
article ground in oil, or ever applied such trade-mark to that 
article ground in oil. The fact that the defendants sell a 
paint composed of a white oxide of zinc ground in oil, and 
represent it as containing white oxide of zinc made hy the 
plaintiffs, when it does not contain white oxide of zinc made 
hy the plaintiffs, is no violation of any trade-mark of the 
plaintiffs. The defendants have not sold the dry white oxide 
in that state. It is not shown that the plaintiffs have sold 
such oxide ground in oil. It is true that the oxide is in- 
tended to he ground with oil, for a paint. So, flour is 
intended to he made into oread. But, if a "baker should false- 
ly stamp his "bread with the mark of a particular "brand of flour, 
the maker of such "brand, if having a trade-mark therefor, could 
not claim that the "baker had violated his trade-mark. And so 
of any other raw material which enters as an ingredient into a 
compound or article of manufacture. 

The application must "be denied. 






A-£ta?">lor1EttvemSictaet^m^, ? n r ?° «: OTd - s rmbol " Man- 
liver. stomM.-h i,„„:„" iJK??- M remedies for diseases of the blood 



COMMISSIONER'S decisions, 

/ lOEK/y. HaRTSIAX. 

Decided December I, ms 
• " SS K ° F ^—-M.-L^v. and 

^ai.unlttetokppeai^Si;"/ 01 ' ^^ ^ 
Appeal on motion. 

TRADE-MARK POR MILS, ETC 

Messrs. Wicdersheim <& Fairbanks for York 
Mess* Steuarl & Steuart for Hartman. 
Allen, Commissioner: 

ExInlLerTf Tfll f^™* ^ tLe ***» * ^ 

S ° f , Trade " Marks granting a motion by York to 

men, is no interference m fact. 
The issue is as follows: 
Sf, 1 ? JPhenated word " Ma-Le-Na 

As here indicated, one party claims the word "Man-1 

£* " h ?fjH M *' ^ the ° te W claims "m. 
^c i\a. The Examiner holds that the goods to which 

Sly ttt^ 11 aPPHed by ^ ^ «» ^^ 
,en« desc "Pt"-c properties, but that the marks 

them e ves are not so nearly alike as to deceive the public 
or m.slead purchasers into accepting the "goods of one 
party supposmg them to be the goods of the other party 
The words are undoubtedly different in appearance, and 
there are stifl greater differences in the sound. It is be- 
lieved that the Examiner was right in holding that there 
is not such close resemblance between them as would bo 
likely to confuse the public or deceive purchasers. 

it zs to be noted that the records of this Office show that 
.Hartman filed a notice of opposition to the registration of ' 
Xorx. s mark, and upon consideration of that case the Ex- ' 
■miliar of Interferences reached the conclusion that the 
marks of the parties were not substantially the same and 
for tiat reason dismissed the opposition. That decision 
haa become final by reason of the fact that no appeal was 
taken therefrom within.the limit set. 

The decision of the Examiner "of Trade-Marks granting 
the motion for dissolution is affirmed. 




1 



7^ 



/ ( 1- Pry. / f j, $— 

COMMISSIONER'S DECISIONS. 
% rA» IE Stax D a ED U™ R0CTD Cable ComAm 

Decided December S, 1905, 

t applicant's trade nS" Z? f *** " al ° ne as the 
filed that in actual u!I it S sb e P nr, r !, fl ' 0m the ^^ens 
ttan of the sun in ecripse! P "^ aCrOSS a ^esenta- 

eaeli « WniSStet'S " *T " P ° f separate fea *«; 
Won must mclude the wh, t'^arlc subjeet-matter, rer^ 
3. Same SA ^ p 6 "" DOt mere 'y oue * thefe &es ' 

flSKZf^Sr as his trad ™ °™- we ot the 

S f r„n!! P " * he theory that « * the predr^ant feature, 
but must register the mark itself, leaving ft tf ^ courts to de- 
i ternnne what is the predominant featme "'what would in- 
nmge his rights. . 

i. Same-Registration Must Include i'he Make Used. 
femce registration does not create fc modify the trade-mark 
right which the appellant has, it is fundamental that the mark 
legistered be the mark used. 

5. Same-Registration Does Not Change Scope op Right. 
1 his Office is not called tfpon to dctBrmiie and fix by registra- 
tion the scope of the applicant's trade-mark right, but merely 
registers the mark which has been used, leaving it to the courts 
to determine the scope of the right acquired by use. 
On appeal. 

trade-mark for conductors and insulators. 
Messrs. Christy db Christy for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register a mark shown and de- 
scribed as consisting of the word "Eclipse." 

The ground of refusal is that the mark shown and de- 
scribed is not the mark which the appellant has used. In 
accordance with the requirements of the law the. appellant 
has filed specimens of the mark as actually used, and it does 
not appear therefrom that it has actually used the word 
"Eclipse" alone as a trade-mark. It has used that word 
printed across the face of a representation of the sun in 
eclipse. The word and the representation both constitute 
valid trade-mark matter, and therefore neither can be dis- 
regarded as constituting no part of the appellant's mark. 
Either could be removed from the mark shown in the speci- 
mens and valid trade-mark subject-matter would remain. 
To constitute separate trade-marks, however, the separa- 
tion must be made in aetual use, and not for the first time 
in the application for registration. They have been com- 
bined in use, andjince registration in this Office is simply a 
recording of the mark Which- mis: heen used they myt 
combined in the registration. 

Since registration does not create or modify the Trade- 
mark right which the appellant has, it is fundamental that 
the mark registered be the mark used. 

The desire of this appellant to register the word "Eclipse " 
alone indicates that it wishes to modify by registra- 
tion its common -law right, and this it is clearly not en- 
titled to do. The suggestion that there is no modification 
of the right, because the word "Eclipse" so predominates 
that it is the only thing by which the mart will be known, 
whether the other features are present or absent, is not per- 
tinent to the present question. If it does so predominate 
m actual use, it will have the same predominance in the 
mark as registered, and consequently its registration as 
used will not limit the right. ' In such case there is no valid 
reason why the entire mark should not be included hi the 
registration. If, on the other hand, the word does not so 
predominate as to render the other features of the mark 
negligible, it is clear that to omit those other features is to 
modify the mark materially. In either case the omission 
of portions of the mark is not permissible. This Office is 
not called upon to determine and fix by registration the 
scope of the applicant's trade-mark right. It merely reg- 
isters the mark which has been used, leaving it to the 
courts to determine the scope of the right acquired by use. 
The decision of the Examiner of Trade-Marks is aDirmed. 



/3^ 









v 



13 f 








OOMMISSIONEE'S DECISIONS/ 




Ex parte The De. Petee Fahunet'S) Sons Co. 

Decided December 5, 1905. 
Trade-Marks— Description Should Include Features 
Shown. 
Where the drawing of the application shows several tilings con- 
stituting trade -mark subject-matter, the description should 
mention them all and should not merely refer to one. 
Same— Description Need Not Include Marginal Line. 

Where the trade-mark is shown in the drawing surrounded 
by the usual marginal line, it is not necessary to refer to the mar- 
ginal line in the description. It clearly constitutes no part o* 
the trade-mark. 
3. Same— Division— Rejection— Appeal. 

The requirement for division of an application, so as to in- 
clude a single trade-mark right, amounts to a rejection of the 
application and is not reviewable on interlocutory petition. 

Ok petition. 

trade -mark for preparation for treatment of stomach 

TROUBLES. 

Messrs. Bradford & Hood for the applicant. 
Allen, Commissioner: 

This is a petition from the action of the Examiner of 
Trade-Marks requiring an amendment of the description to 
accord with the drawing and refusing registration on the 
ground that the application is not limited to goods of the. 
same descriptive properties. 

The mark is described as follows: ' j ../ 

The trade-mark consists of the pictorial representation of a 
century-plant. 

The Examiner says: 

The drawing shows, in addition to said representation, a rec- 
ingular panel surrounding the same, and the letters and nu- 
merals 'P 1780" and "B 1880" within the panel and arranged 



tangular panel surrounding the same, and 
merals "P 1780" and "B 1880" within th 
on opposite sides of the plant respectively. 

The Examiner requires that these additional features 
be referred to in the description or omitted from the draw- 
ing. It is very clear that the letters and numerals "P 
1780" and"B 1880 " might be used alone as a trade-mark, 
and since they constitute trade-mark subject-matter in- 
cluded in the mark shown they cannot be ignored upon 
the theory that they constitute no part of the applicant's 
mark. The Examiner was right in ruling that they should 
not be omitted from the description. 

The rectangular panel referred to is simply the usual 
marginal line drawn around the picture or mark and 
clearly does not constitute trade-mark subject-matter. It 
is not necessary to describe it as part of the mark. 

The Examiner's requirement for a division of the appli- 
cation, so as to include a single trade-mark right, amounts 
1 1 of the application and ii hot reviewable upon 
y petition. 

- granted in so far as description of the 
marginal line is concerned and is denied as to the letters 
and numerals included in the mark. The petition is dis- 
missed in so far as the question of division is concerned. 




// 



00MMISSI01 



SIOHER'S DECISIONS, 




Ex paete The Kingan Packing Association. 

Decided December 5, IBOS, 
I. Trade-Marks— Division— Appeal. 

Refusal of registration on the ground-that the application 

ZZ r rC °T ° ne tratie - nlark risht il ™»Me P and S 
not be reviewed on interlocutory petition 

'^Cr/ 0OM MUST - B£ s *™d-definite- 

The statement of the particular goods upon which the mark 
ha been used must be made.clear and definite, so that thc^uWfc 
will be ,ntonned as to the rights claimed by 'registrants. 
3. Same— Same— Indefinite Statement 

The allegation that the mark has been used upon '"'meats " 
does not convey the clear and definite idea of the Vanicular 
goods which .the statute contemplates. particular 

On petition. 

, A trade-mark for'meats. 
Messrs. Bradford c0 Hood for the applicant. 
Allen, Commissioner: — 

This is a petition, from the actio* of the Examiner of . 
Trade-Marks, holding that the term "meats" used in de- i 
scribing the goods to which the mark has been applied is ' 
.indefinite and includes goods of different descriptive proc 
erties. * r 

, ; The ruling that the application covers goods of different 1 
properties is, in effect, a ruling that it covers more than one 
trade-mark right. The Examiner has required division 
between these rights, and therefore his action is reviewable 
on appeal and not on interlocutory petition. 

Although this petition is irregular, it may be remarked 
that it is not apparent why the applicant objects to stating 
the particular goods upon which his trade-mark has been \ 
.Used The term "meats? undoubtedly does not convey ' 
the clear and definite idea of the particular goods which 
the statute contemplates. It is the duty of this Office to , 
require that trade-mark registration be made clear and , 
definite, so that the public will be informed as to the rights 
claimed by registrants. 
The petition is dismissed. "* 

COMMISSIONERS DECISIONS, s 
Ex paete TflE Eli Lilly Company. 

Decided December 5, 1905. 
Trade-Marks— Sufficiency of Description— Background. ' 
Where the "trade-mark consists of a word which is shown 
printed upon a background made up of vertical lines, it is not 
accessary to describe tho fo&Ckground as a partof the mark. 

Onpetition. 

trade-mark £or supposit6ries. 

Messrs. Bradford & Blood for the applicant. 
Allen, Commissioner: 

This is a petition from the action of the Examiner of 
Trade-Marks requiring the applicant to amend his descrip- 
tion. 

The applicant describes his trade-mark aS consisting of 
the word "Glycones," and the drawing shows that word 
printed on a background made up of parallel vertical lines. 
The Examiner holds that the [description should include 
the background as a part of the mark. 

The specimens of the mark as actually used correspond 
with the drawing, and it clearly appeal's therefrom that 
the background constitutes no part of the applicant's 
trade-mark. If the word "Glycones" were removed from 
the drawing and the specimens, no possible trade-mark 
subject-matter would remain. The background consti- 
tutes simply the field upon which the mark is printed and 
is no more a part of the mark than would be white paper or 
any other paper upon which the mark might be printed. 

The petition is granted. , A 



I 








f„ _ , tn_JL : T 



COMMISSIONER'S DECISIONS. 



-tr&-?C? 




Ex parte The F. B. Q. Clothing Company. 

Decided December S, 1905. 
Trake-Marks— Descriptive Mark Refused— •' Jxsgt Right.'' 
The words "Just Eight" refused registration as's't^dc-'mark 
for overcoats on the ground that they arc descriptive. 

On appeal. 

tkade-mark fob wearing-apparel, 
Messrs. Munn & Co. for the applicant. 
J Allen, Commissioners 

This is ail appeal from the action of the Examiner of 
) Trade-Marks refusing to register as a trade-mark for over- 
i coats, etc., the words "Just Right." * 

The ground of refusal is that the mark is descriptive. 
Section 5 of the Trade-Mark Act provides that no mark 
shall be registered which consists — 

* * * merely in words or devices which are descriptive of the 
goods with which they arc used, or of the character or quality of 
such goods. 

To say that an overcoat is just right is undoubtedly to 
describe its characteristics, since the words clearly convey 
an idea of quality. Any one has the right to describe his 
overcoats as "just right," just as he may describe them as 
"good'' or "excellent." 

The Examiner was right in refusing registration, and his 
decision is affirmed. 




^r COMMISSIONER'S DECISIONS,' 

"7/ *f. **??-£-* > 6 

"'" ;Ex paste E. CT AtktnsI& Company, 

Decided December 6, 1905. 
TRADE-MARKS-DEAWTNG AND DESCRIPTION MUST AGREE." 

There must be no incousistency.between the description and 
drawing in trade-mark cases, and this is true of immaterial^ 
well as materiaTfeatures. Where the mark » shown as.a hy- 
phenated word, Hjmust not beSdescribed as two words. 

OnIpetitton. teade . maek poe aAW3 . 

Messrs. Bradford & Rood for ^applicants. 
Allen, Commissioner: . 

This is a petition from the-ftctioa of the Bummer of 
Trade-Marks requiring an amendment of the description of , 
the trade-mark to accord with the drawing and_specimens 

m The mark as shown consists of the word "Moss-Back," 
and in the description it is said: 

The trade-mark consists of the words "Moss Back." 
The controversy, therefore, relates to the hyphen, which 
appears in the drawings and specimens, but not in the de- 
scription. Itisof course clear that the presence orabseafe 
of the hyphen does not change the trade-mark materially. 
This however, does not warrant an inconsistency, between 
the drawing and description. ,fci. not apparent why the 
applicants should wish to write the mark differently in 
their description and'd**ing. It is not necessary to em- 
phasizethehyphenbystating that the word ^hyphenated 
butitshouldbe-writtenas'ff^pearsonthe drawing. In 
other words, the drawing should; not show the mark as one 
Sng and the.statement describe it "-^^jS 
though the two things may not.be materially different. 
The petition 'is denied. 



^L 



v X COMMISSIONER'S DECISIONS. 




7 




Ex pabte-Bloominctoj£Canning Co. 

I Decided December 6, 1905. 

' Trade-Marks— Cancellation of Registration. 

Where in an interference case involving a registereditrade- 
mark this Office adjudges that the registrant is not the owner 
of the mark and thereafter the attorney for the registrant files 
the certificate of registration with the request that it be can- 
celed, Held that the registration will be canceled. 

I Request for cancellation. 

trade-mark for canned fruits and vegetables. 

Trade-mark registered August 15, 1905, No. 45,347. 

Mr. Joseph L. Atkins for the registrant. 
Allen, Commissioner: 

A certificate of trade-mark registration, No. 45,347, re- 
lating to the word " Imperial " as a trade-mark for canned 
fruits and vegetables, has been presented to this Office by 
the attorney for the applicant for cancellation. 

In the request for cancellation it is stated that the reg- 
istrant is satisfied that Thomas Kensett & Company, of 
Baltimore, Md., are the owners of the trade-mark, and it 
appears from the records of this Office that an interference 
was conducted between this registrant and Thomas Ken- 
sett & Company in which judgment was rendered in favor 
of the latter. 

The authority to cancel the certificate of regis! ration of a 
trade-mark is found in section 13 of the act of Fe binary 
20, 1905, and in view of the circumstances of the present 
case it is believed that the registrant's mark should be 
canceled. 

It is ordered that the registration of the Bloomington 
Canning Co., of Bloomington, 111., No. 45,347, be canceled 
by indorsement thereon and that proper entries of such 
cancellation be made in the Office records. 






Wkight~&~Taylor 'v. Bluthenthal & Bickart'v. 

Mayer, Sons & Company v. Cushman~& Company. 

Decided December 6, 1905.] 

1. Trade -Marks— Interference in Fact— "Chaeteb Oak," 

"Old Charter," and "Royal Charter." 
There is an interference in fact between the words "Charter 
Oak," "Old Charter," and "Royal Charter," used as trade- 
marks upon the same class of goods. 

2. Trade-Mark Interference— Dissolution— Consent of Par- 

ties. 
An interference will not be dissolved merely because the par- 
ties are apparently willing where this Office regards the marks 
as substantially the same. __,_„_ . . _. , . ■»«■,.. 

Appeal on motion. .... a » H 

TRADE-MARK FOR WHISKY. Jl 

Mr. ArtJiur E. Wallace for Wright & Taylor. 

Mr. Joseph L. Atkins for Bluthenthal & Bickart. 

Messrs. Wiedersheim & Fairbanks for Mayer, Sons & 
Company. 

Messrs. Ward cC- Cameron for Cushman & Company. 
Allen, Commissioner: 

This is an appeal by Mayer, Sons & Company from the 
decision of the Examiner of Interferences denying a mo- 
tion for dissolution of the above-entitled interference. 

The issue of the interference consists of the words' 
"Charter Oak," "Old Charter," and "Royal Charter" as 
applied to whisky, and the question for determination is 
whether these words so nearly resemble each other as to 
mislead the public or deceive purchasers. 

It is believed that the word "Charter" included in all of 
the marks is the most prominent feature and the one 
which would attract the attention of purchasers and serve 
as the means of identification. It must be held, therefore, 
that the marks so nearly resemble each other as to be 
likely to cause confusion in the trade. This conclusion 
has been reached notwithstanding the apparent willing- 
ness of several of the parties involved in the interference 
to have the interference dissolved and all of the marks reg- 
istered. In determining the question of identity this 
, Office must exercise its «vn judgment, and it will not dis- 
solve an interference and register to two or more parties 
marks which it regards ps substantially identical. 

The decision of the Examiner of Interferences is affirmed. 




ffCf. ^ 
2 -Z- ? <j£ 



^ /j 9. <hy 



NlBSIOHER'S DECISION'S. 



p*- 



E.. PARTE MONABOH TOBACCO WORKS 
Decided December'JSJOOo. 

TrnnE-\URKS- VSTICIPATION--" PICK'.ANDJSHOVEL." 

S mark consisting of a pick andJshoveUtogcthcr.wth a 
ronrescntaUon thereof, refused registration in^view of a pnoi 
Xk cc^ng of . P^ and WM^On^ ^ *» 
so nearly alikejislto.causc.eorJusion. 

OS APPEAL. 

TRADE-MARK FOR CHEWRM-TOBACCO. 

Mr. Lewis N. Dembits for the applicant. j 

Allen. Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register a trade-mark for plug- 
tobacco, described as follows: 

J gold strip. 

Mration has been-refused o.rthe ground that the 
mark resembles too closely that disclosed in the registra- 
tion oQCarr and Dula, 9,467, June 20, 1882, applied to the 
same'class of gods. 
The registered mark is described as follows: 



I 116 rC™ ISl-L 1 1.* U. main. iv « l uv " ■ , 

Kd extending at right angles to the sa 



ame, and the.word Pick, 
either or both. 

It thus appears that both marks Include the representa- 
tion of a pick and the word "Pick." The question for de- 
termination is whether the addition by ^appellant of 
the representation of a shovel and the word < Shovel so 
distinguisheslthcmarks as to>void>ny hkehhood of .con- 
fusion" in tlie minds of purchasers. • 
It is believed thafpurchasers having in mind.the^word 
"Pick 1 ' or its representation would be likely to be. deceived 
into accepting goods having thereon the pick and shovel 
supposing them to be the goods of the registrant. The 
Examiner was right in refusing registration, and his de- 
cisiou is affirmed. 



OOMMISSWJEE'S' flfcflflftWjtf 
L r. T«; Ztvn-t Electric Compasv. 

EX PARTE TilE J5RYAM u ,..„,,- 

,.,.-„•■ T R "— S.LTERNATIVENESS. 

,. Tk ape-MarK3-'' W.OK ^J ^ .. Jullior " unless 

The letters Jr d ' » ' hcu uscd alone uponlgoods 

t they follow a name, and themo ^ aW)rcvlatl0n of 

$££ nhTrrnd a «tcrs>nnot he included alone 

a ™«rr:rk°Ln:tCword..unior," hut teat 
W0 rd following the name. ^^ ^ ^^ ^ 

OS APPEAL. TKADE . MABE F0 R BOSETTES. * 

Metm. Eowson & Bomon for the applicant. . 
Allen, Commumner: . E aminer f 

A This is an appeal from **^JJ^ ioT ^ttes 
Trade-Marks refusing to renter a t.ade ma 
for electric wiring ^eribed as foUow s ^ ^ 

£«^^"'" 
The Examiner says: 




^.^ISi^^*- 5 



that the two*ot ate not t™ ^ sll0W that 




^?«d^^nt^^ ^ 

It seems perfectly clear tha ; *; ^ ^essarily 
placed upon articles «""*?%*£$ They would be 
Lean to purchasers the word JunK* y ( , 

regar ded asan ar^gn - * ^ are alternatives 
and the letters Jr placeo. anv believed that 

and would have the ^ JT^£$2J .nd alone 
they would be so understood if used sep y ^ 

on merchandise. The appellant is her ^see ^ 

the word and letters alone, and itjWg 
. -„u* in rpfus n* registration. 

Examiner was right in retus n „ ^ thc 

It seems clear from the whole case hat 

two marks shown in the ^J^"3»" It 
ffiark owned by the appellant iti s the wo* ^ ^ 

U believed however, upon ^era^ ^ 

case that . word does «*^>^ ^^ it is in 

lant's trade-mark. As "***££ .. Bl ,- ant ," and 

actual practice "^.^i -Br^nt Junior/' or in 
therefore the appellant =» mark is *. 3 

the alternative ^f n |' a ^ j Tradc .Marks is affirmed. 
The decision of the Examiner or nau 



f/lfrff. 



COMMISSI WER'S DECISIONS. 



T~* 




Ex parte The William Connoes Paint Mfg. Company. 

Decided December IS, 1905. 
1. Trade-Marks— Class of Goods— Substantially the Same 
Descriptive Properties, i 
A single trade-mark registration cannot include the mark ap- 
T plied to paints, driers, white lead, stove-polish, stove and fur- 
nace cement, and roofing-cement,!since the goods are not ol sub- 
[ stantially the same descriptive properties. 
2"Same— Coat of Arms Not Registrable.! *> " 
6- A simulation of the coat of arms of.theJUnited Stateswill no t 
{ be registered as atrade-maik even oinder the ten years' clause of 
. the Trade-Mark Act. 

[ On~appeal. 

TRADE-MARK foe paints and painters' supplies. 

Mr. T.W. Johnson for the appellants. 
Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register a mark described as fol- 
lows: 

The trade-mark of Said corporation eorisists'of the representa- 
tion of an eagle with spread wings, perched upon the American 
Shield and holding in its exposed talons arrows and brandies of 



the exposed ends of several American nags, the whole tiding in- 
closed within concentric circles appearing within a seal-lifie bor- 
der, and, the words "American Seal," which appear in the upper 
portion of the seal-like border. 

The mark is said to have been used tor ready - mixed 
paints, driers, white lead, stove-polish, sio', o and furnace 
cement, and roofing -cement, and the appellants seek to 
register the mark for use upon each of those articles. 

The Exanuper says: 

Registration has been refused for the reason that the pictorial 
representation is a simulation of the United States coat of arms 
and for the further reason that the goods disclosed are not all. of 
the same descriptive properties, and this refusal is based upon the 
decisions of tire Contmisstoi^er in ex parte Faxon, (103 O. G., 891.) 
ex parte Cekn'BiX Oempaiiy, (11$ O. tt., IS».) 

As was .pointed out in the decision last cited by the Ex- 
aminer, a mark cannot be registered even under the "ten 
years' " clause of the law where it includes the coat of 
arms of a State or nation. The present mark includes a 
simulation of the coat of arms of the United States, and .„ 
therefore the Examiner was right in refusing to register it.-.;. 

The goods upon which the mark has been used are not of 
substantially the same descriptive properties, and the use of 
a particular mark upon one would not infringe the rights 
acquired by the use of the same mark by another party 
upon others. It is apparent, therefore, that the appli- 
cants are seeking to secure a single registration covering 
more than one trade-mark right. For the reason stated 
in the decisions cited by the Examiner it is believed that 
the law contemplates separate registrations for separate 
rights. 

The decision of the Examiner of Trade-Marks is affirmed. 

Mulligan v. Tempest Salve Company 



COMMISSIONEE'S DECISIONS. 







i i-% 1 r Ex parte American Glue Company. 

Decided December 13, 1905. '-"' 

> Trade-Marks— Coat of Arsis— " TenjTears'" Qlause. 

The coat>f arms o£ the United States is not registrable as a 
trade-mark cyeiumder the "ten years' " clause of the law. 

On appeal. .~jj &% ■#■§! Sjg ; MMM 

I 1 8 : "3 TRADE-MARK FOR FLINT, ETC/ ..:'": ■ 

• r Mr. Vere Goldwaiihe for the applicant.] . ....-, 

Allen, Commissioner: '■ ■ ■■"."■■■ •■■■• ^ ^i '*• " i 

This is an appeal from the action of the Examiner of 

. Trade-Marks refusing to register a mark described as fol- 
lows: 

. The trade-mark consists of the words ' ' New England " together 
with a representation of a spread-eagle holding in its talons ar- 
rows and an olive branch and having a shield upon its breast. 

i It is clear upon inspection, and the appellant admits in 
his brief, that the mark includes the coat of arms of the 
United States. Section 5 of the act~ of February 20 ex- 
pressly prohibits the registration of marks including the 
Coat of arms of a nation, and it is because of the inclusion 
of the coat-of arms that the Examiner has refused registra- 
tion in this case. 

It is clear that the Examiner is right in his ruling. The ' 
contention is made on behalf of the appellant that the pro- 
hibition against the registration of a mark mcludiiiglhe 
coat of arms in a registered trade-mark has no application 
to marks alleged to have been in actual and exclusive uso 
for ten years, and attention is called to the fact that such 
allegation of use has been made in this case. The questic n 
here involved was fully discussed and was decided injure' 
case of C'ahn, Btlt & Company, (118 O. G., 1939r>--f , orthe 

. reasons there stated it is held that this Office is justified in 
refusing registration of a mark presented under the "ten 
years' '' clause of the law where it includes the coat of arms 

' of a State or nation. 

It is noted that the appellant has Tiled a substitute de- 
scription of his mark curing certain objections made by the 
Examiner and that therefore it is unnecessary to refer to 
^fchose objections. 

The decision of the Examiner refusing registration is af- 
firmed. 



*^aat3Etf&.& 



4tfr 



Decided December 5, 1905. 
Interference — Appeal — Refusal to Enter Judgment. 

There is no appeal from the refusal of the Examiner of Inter- 
ferences to enter judgment of priority in favor of a particular 
party, nor will the matter be reviewed upon interlocutory peti- 
tion. The appeal must be from the final judgment when en- 
tered. 

On petition. 

trade-mark for liniment. 
Messrs. Pennie & Goldshorough for Mulligan. 
Messrs. Fred 6. Dieterich & Go. for Tempest Salvo Com- 
pany. 
Allen, Comm issioner: 

This is a petition by the Tempest Salve Company that 
the Examiner of Interferences be directed to enter judg- 
ment of priority in its favor. 

It appears that at the hearing a motion was made on be- 
half of tlio Tempest Salve Company that judgment be en- 
tered in its favor because of a prior registration by it ante- 
dating the registration by Mulligan. Upon considering 
the motion the Examiner of Interferences made an order 
I shifting the burden of proof in the interference and setting 
I new times for taking testimony. He, however, denied the 
i motion for judgment. 




f^"^- 



/*& 



It is very clear that the action of the Examiner of Inter- 
ferences refusing to enter judgment should not bo re- 
viewed and reversed upon interlocutor}' petition. To do 
' so would be to dispose of the entire case upon its merits 
before any final judgment has been entered by the Exam- 
iner of Interferences. The case must go to final judgment . 
before there can be any review upon appeal, and it. is clear , 
that a refusal to decide the case in favor of a particular 
party without testimony is not a final judgment. 

This petition is, in effect, an appeal before judgment and 



. 



is dismissed. 



----- 



J 



\JUJXlJB.i.i501U11JJXV U KUUiWlVHH, 

PARTE CiRISEMX - VTeF.KE PAUL GiMTDAl 



<H 



ES PARTE GKISEEIX 

G. M. B. II. 

Decided Ecccmbcr°3.\100ii. 
1, TRADE-MARKS-" TENDING " CASES-REJECTION I BYlEXASf- 

IVEU. II 

\ trade-mark application is not to be regarded as adjudicated i 
and as not "pending" within the meaning of sections 14 and 24 ) 
of the act ol 1903 .merely beeause.itjiad beenJrejBetedJJy.tb.a 
Examiner. 

2. S VME-SaME-SAME-FINAT. ADJETICATIOK. 

The mere rejection by the Examiner of a trade-mark applica- 
tion under the act of 1881 did not finally dispose of it, since it was 
subject to amendment and reconsideration if request therefor 
were made within a reasonable time. 

3. Same— Same— AprEAL— Unreasonable Delay. 

While a trade-mark application is notjtaken outlof the class 
of pending cases merely because it has been rejected, it is taken 
out of that class where the right o£ appeal wasjexhaustcd and 
where there has been unreasonable delay .in prosecuting the ap- 
plication, ,J,d 
i. Same— Same— Abandonment, 

Where after rejection the trade-mark applicant abandoned 
all intention of further prosecuting the case, it was not a live or 
pending case, but was abandoned. 

5. Same-Same-Delay in Prosecution— Evidence of Aban- 

donment. 
Failure to take any action in prosecution of an application for 
a long pcriofl o£ time is evidence of an intention to abandon the 
application and in the absence of proof to the contrary is to be 
taken as establishing the fact, i 

6. Same— Same— Lacues— Application Not Notice. 

An application for the registration of a trade-mark is not no- 
tice to the public through this Office of the applicant's claim of 
ownership unless that application is prosecuted with reasonable 
diligence. The application is abandoned by laches. 

7. Same— Same— Delay of One Year Unreasonable. 

No hard and fast rule can be laid down as to what delay will be 
regarded as an abandonment of a trade-mark appUcation; but 
ordinarily a delay for more than one year will be deemed unrea- 
sonable unless excuse is made therefor. 

8. Same— Anticipation— "Griseein" and "Electrene." 

The trade-mark "Griserin" does not so nearly resemble the ( 
mark "Electrene" as, to deceive purchasers. 

OX APPEAL. 

TRADE-MARK FOR MEDICINAL PREPARATIONS. 

Messrs. KnigJil Bros, for the applicant. 
Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing registration on the ground that no 
valid application has been filed under the Trade-Mark Act 
of February 20, 1905 r which is now in force. 

It appears that application for registration was filed un- 
der the act of 1881 on December 23, 1904, and that the 
Examiner of Trade-Marks wrote a letter on January §, 
1905, refusing registration in view of a prior registration, 
No. 27,094, September 24, 1895, granted to one Reynolds. 
He also made certain formal objections. On April 17, 
1905, the applicant filed an amendment curing the formal 
objections and seeking to bring the application under the 
• act of February 20, 1905. The Examiner refused to admit 
this amendment, saying: 

Applicant is not entitled to amend this'npplieatinn to 1 bring the 
same under the provision of the act of February ".!'), 1905, for the 
reason that the application is not a pending application under tho 
act of 1881, having been refused registration in Office letter of Janu- 
ary 5, l'.iuj. 

Upon request for reconsideration the Examiner repeat- 
ed his ruling, but also Called attention to formal defects in 
the amendment. Another amendment was then filed, be- 
ing in form such as required by sections 14 and 24 of the 
ict of 1905. The Examiner refused to admit the amend- 
ment or to consider the application as one pending upon 
which registration might be granted. This appeal was 
thereupon taken, and it presents for determination the' 
question whether this application was pendingjat the time 
of the passage of the act of February 20, 1905. 

The Examiner's action in this case was based upon my 
ruling in ex parte Mark Cross Company, (11G O. G., 1733,) 
where it was said: 

In tho present cue It surely is not unreasonable to suppose that 
Congress Intended the word "pending" to have the ordinary 
meaning and to apply in cases which Bad not been adjudicated, 
it was to be presumed that there would be applications In this of- 
Dce filed under the act of 1881 and not disposed of at the tlmotha 
new law was to take effect. It was obviously proper ami reason- 
able to preserve the rights of these applicants and provide for an 
adjudication nf their eases. The word pending plainly i 
those eases, and M cannot l>c applied to adjudicated cases without 
giving u .i forced and unnatural construction. 



, 



The Examiner pdmts olit that the present case had been 
acted upon and "adjudicated" by him and that therefore 
under the above ruling it was not pending when the law]of 
1905 took effect. He was justified in taking such position j 
in view of the decision cited and would not have been justi- * 
lied in allowing the present case unless and until some 
higher tribunal modified the ruling or construed the term 
"adjudicated" to mean sometliing more than a mere let- 
ter of rejection by the Examiner. 

It does not follow, however, that it is finally determined; I 
that no applications which stand rejected when the act of 
February 20, 1905, took effect are to be regarded as pend- 
ing at that date. My attention has been called to several 
cases in which there would be manifest hardship in holding 
that the applications tvero not pending, although they had 
been rejected. In some instances the rejection was made 
1 so late that it was impossible for the applicant to ask for 
reconsideration or to appeal before the new law went into 
effect. In others the applicants show that they were dili- 
gently engaged in investigating the alleged prior ownership' 
of the mark by another, cited as the reason for rejecting 
the application, and at the time the act of 1905 took effect 
had not completed that investigation. They were unable 
to present to this Office the result of that investigation 
with a request for reconsideration until after the new law 
took effect. 

In the matter of collecting for the Government fees for 
services rendered by this Office it is believed that the fee 
should not be remitted by the' executive branch of the Gov^ 
ernment in any case where there is reasonable doubt as to' 
the intention of Congress. The executive officer of the 1 
Government should collect the fees in case of doubt,I6av-i' 
ing the parties to their remedy by action in the courts; 
whose functions are to determine finally just such ques- 
tions. 

In the present case, however, I have reached the conclu- 
sion that there is no reasonable doubt of the fact that the 
application was pending within the meaning of the act of 
February 20, 1905, at the time of its passage. The mere 
rejection of the case by the Examiner did not finally dis- 
pose of it. It was subject to amendment and reconsidera- 
tion if request therefor were made within a reasonable time. 
It was to be expected that the applicant would ask for re- 
consideration or appeal within a reasonable time if it did 
not wish to acquiesce in the adverse ruling. The appli- 
cant did, in fact, ask for reconsideration without unreason- 
able delay, and I am convinced that it was not the intent 
of Congress to deprive it of that right merely because in 
the meantime the new law was passed and went into effect. 



While I am satisfied, after thorough consideration, that , 
Confess did not intend to require a new application and 
2X n order to entitle a trade-mark claimant to secure 
Z Adjudication which he was entitled to secure and w. I 
duigently seeking to secure on his application under the 
,Jf„ i am equally well satisfied that the word ptnd- 
•"Tn^h^onSOS does not include and was not in- 
tended to include all applications rejected under the act of 
mi merely because the applicant had not taken advan- 
tage of the right of appeal given him by the rules 

!t is perfectly clear that many applications had been re- 
nted by the Ixaminer and abandoned by the applicants 
ong before the act of 1905 was passed, mere after rejec- 
tion the appUeant abandoned all intention of further prose 
curing th" case, it is clear that the case was not a live** 
lending" ease. Failure to take any action for a long pe- 
riod of toe is evidence of such abandonment and in the , 
absence of proof to the contrary is to be taken as establish- 
i»g the fact. 



A suit in the courts must be prosecuted with reasonable 

| diligence in order to operate as notice or to have the effect 

of lis pendens. (Am. .and Eng. Encycl. of Law, vol. 21, p. 

_fi22; Bedfidd y. Ystalyfera Iron Co., 110 U. S., 174.) §o 

here an application for registration of a trade-mark is not 

notice to the public through this Office of the applicant's 

. claim of ownership unless that application is prosecuted 

\ with reasonable diligence. Long and unexcused delay 

, shows an abandonment of the proceeding, and this-Office 

. is justified in regarding it as no longer notice of the party's 

claim to the alleged- trade-mark. In regard to diligence of 

prosecution it is said in American and English Encyclo- 

I psdia of Law, (vol. 21, p. 623:) 

No hard and fast rule, however, can be laid down for the govern- 
[ merit of all cases, but the question of reasonable diligence in prose- 
cuting must of necessity depend upon the partieuiarfacts and cir- 
cumstances of each ca-e. 

While no hard and fast rule can be laid. down as to what 
delay will be regarded as an abandonment of a trade- 
mark application, it may be said that ordinarily a delay for 
more than a year will be deemed unreasonable unless ex- 
cuse is made therefor. Congress has deemed one year a 
reasonable time for acting upon patent applications, and 
no reason is apparent why a longer period should be re- 
quired in trade-mark cases. The analogy is as close as 
| ,that which was the basis of the ruling by the Supreme 
Court that reissue applications should be made within two 
years after the date of the patent. (Topliff\. Topliff, 145 
U. S.,156.) 

It must be held that a trade-mark application was not 
■"pending" at the time of the passage of the act merely ber 
.cause no final decision in the case had been rendered by the 
Commissioner in person on appeal, as in the case of Mark 
Cross Co., (116 O. G., 2534.) Any unreasonable delay, 
particularly after adverse judgment by the Examiner, 
- takes the case out of the class of live or pending applica- 
tions, and, as above stated, a delay of more than one year 
will be regarded prima facie as unreasonable. 

Since there was no unreasonable delay in the present 
case, it must be regarded as pending at the time of the pas- 
sage of the act of February 20, 1905. 

This appellant's trade-mark consists of the word "Gri- 
serin," and the mark registered by Reynolds and cited 
originally as the ground of rejection consists of the word 
''Electrene." There is no such resemblance between the 
marks as would deceive purchasers, and it ia probable that 
the Examiner would have withdrawn his rejection upon 
reconsideration if he had felt at liberty to regard the appli- 
cation as one properly before the Office for consideration 
under the act of 1905. 

The decision of the Examiner of Trade-Marks is re- 
versed. 



/?# 







<?' 



M 



COMMISSIONER'S DECISIONS 




'W\Ek parte A. G. Spalding & Bros. 

Decided December St 190o. 

3. 'Trade-Marks— Description [of Particular Goods— Statu- 

torv Requirement. ' : ■ t - yj 

Whcre^a trade-mark application said that the mark had been 

used upon "implements, apparatus, and goods used in athletic 

games and sports," registration was properly refused on tho 

ground that the statutory requirement for a description of tho 

particularlgoods had not been complied with. 

2, Same— Same— Indefiniteness— Prima Facie Eight. 

A description which is so indefinite as to convey no intelligi- 
ble idea of the particular goods upon which the mark has been 
used is not a compliance with the statute and does not make 
out a'prima facie right to registration. 

3. Same— Use Upon Particular Goods Necessary— Facts, 

Not Conclusions, Must Be Stated. 
An applicant's right to registration of a trade-mark is de- 
pendent upon his use of it upon some specific goods, and under 
the terms of the statute the facts upon which the right is based 
must be stated, leaving the scope of the right acquired for sub- 
sequent judicial determination. 

i, Same— Same— Goods Not of Substantially the Same De- 
scriptive Properties. 
Where the description of the goods upon which the mark has 
beon used is in such broad and general terms as'to include goods 
which are not of substantially .the samejflescriptive properties, 
registration must be refused on the ground that the application 
is not limited to a single trade-mark^right. 

5. Same— Division— Single Trade-Hark Eight. 

A single trade-mark registration should include only a single 
trade-mark right, and a single right extends no further than to 
merchandise having substantially the same descriptive proper- 
ties. 

6. Same— Same— Acts OF1881 and 1903 Compared. 

The act of 1905 contains the same provisions and has the same 
meaning as the act of 1SS1 in so far as the limitation to goods of 
substantially the same descriptive properties is concerned. 

On appeal. ' -, 

TRADE-MARC FOE ATHLETIC SUPPLIES, 

Messrs. ftedding, Kiddle & Greeley arid Mr. A. P. Greeley 
for the applicants. &gj 

Allen, Commissioner: ""i 

This is an appeal from the action of the Examiner of 
TraderMarks rejecting the above-entitled application for 
trade : rnark registration on the ground that the applica- 
tion dqes not include a particular description of the goods 
tq which the mark has been applied, as required by the 
statute, and upon the further ground that the application 
covers more than one trade-mark right. 

It is said in the application: 

The class of merchandise to which the trade-mark is appropri- 
ated ia athletic supplies*, 'and th<S particular description of the 
good? comprised in said class upon which said trade-mark is used 
is implements, apparatus, and goods used in athletic games and ' 
sports. 

This is the only description of goods contained in the ap- 
plication, and it is obviously so indefinite as to convey no 
jnteHigible idea of the particular goods upon which tho 
Siark has been used. 

The right to registration is founded upon tho common— . 
,iaw right which can be acquired only by use of the mark 
upon some particular articles of trade. The statute con- 
templates and requires that the applicant state not merely 
the class of goods, but the particular goods within the class 
upon which the mark has been used. Section 1 of tb,e act 
of February 20, 1905, says he shall state — 
ahc chisa-of merchandise and the particular description of ponds 
.comprised In such class to which the trade-mark is appropriated. 






This requTrerne'nt for a statement of the particular goods 
upon which the mark has been used was evidently placed 
'in the law to prevent fraud and imposition upon the public. 
'The applicant was not to be permitted to determine for I 
ihimself tile scope of his trade-mark right and secure the I 
sanction of this Office for his claim without disclosing the 
tfacts upon which his claim is based. However broad_his 
right, it is based upon the use of the mark upon some spfe i 
tcifitt goods. It seems perfectly clear that the appellants, 
may nave used their mark upon some "implements, appa- | 
ratiis, and goods used in athletic games and sports" with- j 
•out acquiring a common-law right to exclude others from 
■using the mark upon other "implements, apparatus, and. 
goods used in athletic games and sports." In other i 
words, it does not follow from use upon some of the goods 
that the appellants' right extends to all goods within the 
alleged class, and therefore their statement is too indefinite I 
to establish even a prima facie right, i ' • 

The applicants should have specified the particular 
g'c'ooty upon Which they have used the mark, leaving it to- 
the cbuife*to -determine whether or not thair right jnejfftle's' 
the whole fielofoi' "athletic goods. In bitter Words, they 
should furnish the specific material upon which the conclu- 
sion is based, and not merely the conclusion. If they are 
wrong in their conclusion, they mislead the public and fur- 
nish nothing by which their error may be detected. Reg- 
istration in such a case is a fraud upon the public. 

The Examiner was clearly right in refusing registration, 
because the applicants have not complied with the statu- 
tory requirement for a statement of the particular goods'* 
upon which the mark has been used. 

While the appellants' statement fails to mention the spe-' ' 
cific goods, the broad and general terms used by them in- " 
elude a great variety of goods of entirely different charac-' -• 
ters. As above stated, it is impossible to determine from 
the appellants' statement whether they have 'acquired 
trade-mark rights upon all goods coming within the terms 
of their indefinite description; but it is very clear that if 
they have such rights they constitute more than one 
trade-mark right. . All goods coming within the indefinite 
terms of description are not of substantially the sariie 'de- 
scriptive properties. It is clear that different parties 
might use the same mark upon different goods coming 
within the description without bringing about a conflict of 
rights. This is because there is Ho such similarity be-" 
tween any and all implements or apparatus used in any 
and all athletic sports or games as to make one believe that 
they have the same origin or ownership merely because 
the same mark appears upon them. This is because ath- 
letic sports and games are of great variety, and the im- 
plements and apparatus used in them are subject to the 
same variety and include articles having no resemblance to 
each other, either in appearance or use, and which are of 
such diverse character that they are usually, if not always, 
made by different manufacturers. 

In the case of Faxon (103 O. G., 891) it was pointed out 
that under the act of 18S1 a single trade-mark registration 
should include only a single trade-mark right and that a 
single right extended no further than to merchandise hav- 
ing substantially the same descriptive properties. The 
reasons for the ruling were fully stated there, and it is un- 
necessary to repeat them here. 

When the act of February 20, 1905, was passed, revising 
the entire trade-mark law, no change was made in those 
provisions upon which the decision in the Faxon Case was 
bused. The same words were used in this new law, and 
therefore it has the same meaning. (Ex paiie The Chas. 
H. Pliiilips Chemical Co., 119 O. G., 652.) It is to be pre- 
sumed that Congress would have changed the wording of 
the new law if it had intended that it should have o differ- 
ent meaning from that which Had been found in the old law. 
The appellants are not entitled to registration, since 
they have not made oul a primafacie case of ownership al 
common law by specifying the particular goods upon 
which they have actually used the mark, as required In 
the statute, and since the claim made by them ineludos 
many separate trade-mark rights which oaunot bo in- 
cluded in a single rrgi.str.aiun. 
The decision of the Examiner of Tradc-Sfarks is affirmed. 



/ 



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WmrroiOBAM v. Automatic Switch Company. 
Decided December IS, 1906. 

, TBADE .MA* K OPPOSITION -APPEAL UPON INTERLOCUTOR* 

S no appeaTfrotn this action would be entered. 
2. SAM E -SAME-S^ E . answer ffi0 ExamiMr 0{ ( 

it understood wherein opponent would ^ mch 

ships by erroneous; dee sionstf the ^~ °ve £g 

ptmmufg Lerlocutory appeals in these cases. 
On petition. 

. MOTOR STARTERS AND REVERSERS. 

Mr. Clifton V. Edwards for Automatic Switch Company. 
Mr. Bolert Watson for WMttingham. 

^SS^«»«*»* ^Examiner of In- ! 
teSnces'overruling the exception tak en by opponent 
to the answer of the applicant in the above-entitled oppo 

sition to registration of trade-mark. 

The exception is based on the ground of »P«^X 
The matter alleged to be impertinent is pomted out andjt 
is prayed that the same may be expunged. The quesUon 
HI Considered by the Examiner of ^«^ 
found that portion of the matter excepted to was clearly 
recant and that the remainder of such matter was no so 
7e2 impertinent as to justify striking it from the record 
He Sore overruled the exception, and the opponent 
brings this petition for review of that action. | 

" Itta setried principle of procedure that no appeal wd 
lie from an interlocutory order refusing to stake out pa t 
of pleadings as redundant, irrelevant, or shan, 9**t 
cloUia PUaMng and Practice, 112 note 5 and .2Amn 
can Digest, Century Ediiim, sec. 704, a, b, n ) No reason 

in cases of the class presented by ^petition In ove 
rulin- such exceptions to answers the Examiner of Inter 
etn^sdenies 5, opponents no substantial r^Jnor is 
it understood wherein opponents would be ™^ te «V™ 
hardships by erroneous decisions of the Examm *ov 
ruling such exceptions sufficient to justify the general 

SiTta delay V, ~* «T- f trip ^ 
posed upon parties by permitting interlocutory appeals 

these cases. 
Appeal dismissed. 




OOMMISSIOKBR'S DECISIONS. % 

\X. A. Cakes eVCo. v. Gifamffl luroJtTATiox Co. 



1. Xi; 



i ' ■ December 13,1003. 

Amark £Z£« of "Old-Jay" -*"^^ 

, , c. AVE _CONSTITUTIONALITV OP LAW-QUESTION POP. COURTS. 
The o™ to the constitutionality of the trade-mark 
The qucsuon a opposition to the registration 

Appeal from Examiner of Interferences. 

TRADE-MARK FOB WHISKY. 

Mr. Jas. L. HopKw and Jfr. /*» & Barfer for Gaines 
*S n K3irfc B. £<*/<* for Carlton Importation Com- 
pany. 
\llen, Commiss'w,ier: 

Sis an appeal by W. A. Gaines & Company from tllo 
deli n of the^nLer of Interferences disimssutg their 
Sice of opposition to the registration of a trade-mark by 

1 ion oi ITay bird perched upon the branch o£ a tree havmg 
unon each side "Old J" and beneath the words Old Jay 
rI ". W. A. Gaines & Company filed not.ee of opposi- 
tion to the registration of this mark on the ground that . 

"y are the owners of a mark which so nearly resembfes_ 
the Applicant's mark that confusion is likely to result 
They say that they are "the sole and exclude owner^L . 
tte tra/e-mark for whisky consisting of the words Old 
Crow,' accompanied by with the picture of a «ow- 
The Carlton Importation Company hied a demurrer 
' h «l notice of opposition, which "demurrer" was sus 
to the notice ot opp Interferences on the ground 

St Ja tStTon the face of the papers that there 
!1 no such similarity between the marks as to cause confu, 

Si Both marks include the word "old," and both include 
th!r pre entation of a bird; but there the similarity ends- 
tT!y as disclosed in the application and m the spool- 
The jay, as ai different in appearance 

from a crow a entirely different in sound from 

! W " ^IJZJl^wZrl^. If there is to be 
« crow and suggests a, because of 

any eonfusipn betwe, «*• -^ ^ „ a bird . 
the association of the^ora ^^ jg 

Ir^nl'tT^rU nor to mislead pur- 

Ch r eXe l!Sf htfffrSed the question as to the 
The appellants 1 ere na of February 20, 

constitutionally of ^^ to discuss that matter. 

tha Tbf E xaminer was right in dismissing the opposition, 
and his decision is affirmed. 





COMMISSION'S DECISIONS. 




sy£ 



Ex parte _ Ci ) uett, , _Peabody & CoMpS 

Deckled December l.' h 1005. 

;1. TRADE-MaRKS— PURLICATIOX— REJECTION THEREAFTER WITH- 
OUT OPPOSITION. 

The EJcaminor may refuse registration a [tor the publication of 
| a trade-mark under section li of the Tade-Mur!: Act even where 
no notice of opposition is hied. 

2. Same— Same— Section Construed— Permissive, Not Man- 

datory. 
The provision in section (1 of the act that the Commissioner 
"shall issue a certificate of registration" incase no notice of op- 
position is filed is permissive and is not mandator}-. 

3. Same— Same— Same— Rioht to Reject— Intent."! 
Section was intended to provide an additional means for de- 
termining the right of the applicant to registration, and not for 
the purpose of cutting oil the right of the Office to consider and 
act upon any and all legitimate questions as to the applicant's 
right. 

4. Same— Same— Same— Consideration of Evidence. 
It was not the intent of section ll that this Office should reject 

an applicant upon evidence presented by one opposing and dis- 
regard the same evidence if discovered by its' own efforts. 

On petition. « 

trade-mark for garments! 

Messrs. Mosher cO Curtis for the applicants. 
Allen, Commissioner: 

This is a petition from the action of the Examiner of 
Trade-Marks in reexamining and rejec ting this application 
after publication in the Official Gazette for the purpose 
of permitting opposition by interested parties under the 
provisions of section 6 of the act of February 20, 1905. 

It appears that this application was duly considered by 
the Examiner and was passed for publication on May IS, 
1905, and was published on Juno 6, 1905. Xo opposition 
was filed against registration; but the Examiner con- 
cluded thereafter that" there was a statutory bar to the 
registration of the mark claimed mid for that reason wrote 
a letter rejecting the application. This petition does not 
raise the question whet her the Examiner was right in con- 
cluding that there is a statutory bar, but raises thejquestion 
whether he has authority under the statutes to reject an 
application after publication, even where a statutory bar 
exists. 

Section 6 of the act of February 20, 1905, after providing 
for publication of the mark for purposes of opposition, pro- 
vides that — 

Tf no notice of opposition is filed within said time the Commis- 
sioner shall issue a certificate of registration therefor, as herein- 
after provided for. 

The question for determination is whether the word 
"shall" appearing in this clause is mandator and abso- 
lutely precludes the rejection of an application after pub- 
lication unless notice of opposition is filed. 

In Railroad Company v, Eecht (95 U. S„ 16.S) the Su- 
preme Court said: 

As against the, Government, the word "shall," when used in 
statutes, is to be construed as "may," unless a contrary intention 
is manifest. 

In volume 25 .of the American and English Encyclo' 
piclia of Law (p. 6.34) it is said: 

In all eases the question whether "shall" will be interpreted in 
the sense of "may" or will bo construed as mandatory depends 
upon the intention of the legislature. 

The intention of ,'.he Legislature, as gathered from the 
entire Trade-Mark Act and from the particular considera- 
tion of section 6 thereof, is clearly that the word " shall " 
is to be understood as permissive and not as mandatory. 
The purpose of the publication referred to in section 6 is 
to permit others to present to this Office evidence which 
will enable it to determine whether or not the application 
is entitled to registration; In other words, it merely pro- 
vides a method of securing evidence upon which this Office 
ijs.to. hose its action. It provides this method, because this 
Office has not the machinery for obtaining otherwise and 
by its own efforts all information bearing upon the right 
1 of the applicant to registration. It is perfectly clear, how- 
ever, that it was not the intention of Congress to provide 
that this Office should disregard evidence which it secured 
"by its o\v(i efforts and should reject, the application upon 
exactly the samo^vidence if it Is presented by some one 
interested in opposing the registration, This, however, 
would bevfcho result of sustaining the petitioners' conten- 
tion as to the meaning of the word "shall' in section 6 of 

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Ex tarte TheJKixcax Packin(TAssoc: 

Decided December .10. VMS. 

1. TRADE-MaCICS — PA.RTICULARJDESCRIPJIOH OF GOODS— STATU* 
TORY REQUIREMENT. 

The statute requires that the applicant specify the particular 

goods upon which his mark has been used and not merely tlie 

class of goods. The term "meats " gives the class, hut not.thc 

particular goods, and is not sufficiently definite. 

2. Same— Division— Hoods of the Same Descriptive PeoperiJ ' 

TIES. 

i mly one trade-mark right should be covered by a'single reg- 

jstration, and where the statement of the goods to which the 

mark has been applied is so broad as to include goods which are 

[ not ol substantially the same descriptive properties registration 

will be refused, 

Ox APPEAL. 

TRADE-MAKE FOR MEATS AND LARD. 

Messrs. Bradford & Uood for thcjippellant. 
Ali.ex, Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register a trade-mark said to have. 
been used upon "meats and lard." 

The grounds of refusal arc, first, that the appellant has 
not complied with the statutory requirement that he shall j 
include in his application "the particular description of 
goods * * * to which the trade-mark is appropri- 
ated/' and, second, that the general and indefinite terms 
used arc broad enough to include goods so different in de- 
scriptive properties that the use of a single mark upon 
them would constitute different trade-mark rights. 

Section 1 of the act of 1905 says that the application 
shall specify — 

the class of merchandise and the particular description of goods 
comprised in such class to which the trade-mark is appropriated. 

In the present case the class of goods is said to be 
"foods and relishes," and the particular description of 
goods within the class is "meats and lard." While the 
term "lard" is sufficiently specific, it is clear that the term 
"meats " is not. It is a statement of a class of goods and 
not a statement of the particular goods, as required byjthe 
statute. It is not of consequence that the term "meats" 
Comes within the broader class of "foods and relishes," nor 
that it comes within the class, mentioned in the brief, " ani- 
mal products used for human food." The test is not 
whether there is some broader term which may be used to 
indicate a class which is still broader in scope and includes 
the class mentioned, but is «rhether the terms used are suf- 
ficiently definite to inform the public just what'use of the 
mark has been made. The appellant has not said that he 
has used the mark upon all kinds of articles which come 
within the class of meats, and the statute contemplates 
that lie shall stale clearly tlie specific use which he has 
made of his mark, so that the public may determine the 
scope of bis right. 

Tlir present application is too indefinite to make it pos- 
sible to determine just what right the appellant has ac- 
quired by actual use. As pointed out by the Examiner, 
however, if be is seeking to claim the right to use the mark 
upon any and all articles coming within the meaning of t lie 
broad term "meats" I. g to secure by one regis- 

tration more, t'uau one tracje-mark right. This is not per- 
missible. 

The appellant should specify the particular goods upon 
Which tin; mark lias been used ami should limit the appli- 
cation en such as are of substantially the same descriptive 
properties. 

The decision of the Examiner of Trade-Marks is affirmed. 



//UP* 



^*a 



Gaines'and cLfant v. C A. Kneciit and Son. 

Deemed December 18, 1905. 
I.-Trade-Marks-lW of1|Identity-" Raven Valley" and 
"Old Crow." 
Registration of a niark consisting of theftvords Raven Val 
ley" and the representation oi three ravens is not to be refused 
because oi the prior use by another of the words "Old Crow" 
and the picture of a crow. The marks are not so nearly alike as ( 
to deceive purchasers. 

2. Same— Opposition— Sufficiency of Answer. 

Where opposition is made to the registration of a trade-mark 
"' and the applicant is called u;pon to make answer within a certain 
time and he docs within that time file a paper entitled a demurrer, 
setting forth reasons which the Office regards as sufficient for 
dismissing the opposition, .//.eioHliat he has complied with the 
Office requirement for an answer. 

3. same-Same-Fle^ings-Technical Forms Not Insisted 

Upon. 
Technical and refined objections to the form of pleadings in 
trade-mark oppositions will not be sustained. It is sufficient 
if the parties present to the Office the material which will enable 
it to properly dispose of the case on its merits, and it is not neces- 
sary to insist upon technical forms. 
i. same-Constitutionality . of act of 1905-JIatter fob 
' Courts. 
■•• The question whether the Trade-Mark Act of February 20, 
1905, is unconstitutional will not be entertained or determined 
by the Patent Office, 'but will be left for determination by the 
cdurts. The Office will perform the duties imposed by the act, 
leaving to the courts the question as to the validity of the regis- 
trations made thereunder." 
Appeal from Examiner of Interferences. 

TRADE-MARK FOR WHISKY. v 

Mr. James L. Hopkins and Jfr. John S. Barker for W. A. 
Gaines and Company. 

. Mr;. Arthur E. Wallace for C. A. Knecht and Son. 
Allen, Commissioner: 

■ This is an appeal by W. A. Gaines and Company from 
the decision of the Examiner of Trade-Marks dismissing 
their opposition to the registration of the trade-mark 
claimed by C. A. Knecht and Son. 

, The, opposition was based upon the allegation that | 
W. A. Gaines and Company are the owners of a trade- 
mark so nearly resembling the applicants' mark that the j 
latter would deceive the public and mislead purchasers. 
On June 28 the applicants were called upon to file an an- 
swer to the notice of opposition on or before luly 28, 1905. 
On July 24 the applicants filed a paper entitled a de- 
murrer, alleging that the notice of opposition sets forth 
no sufficient reasons for refusing their application for reg-' 
istration. The Examiner of Interferences sustained this 
contention and entered judgment dismissing the opposi- 
tion. W. A. Gaines and Company thereupon filed this 
appeal. 

, In support of the appeal it is urged, first, that judg- 
ment should have been entered in favor of W. A. Gaines 
and Company because of the applicants' failure to answer 
and that in the absence of an answer the demurrer should 
iiave been stricken from the files; second, that the Trade- 
Mark Act under which the applicants C. A. Knecht and 
Son seek registration is unconstitutional and void; third, 
that the Examiner was wrong in sustaining the demurrer 
on the ground that the marks claimed by the respective 
parties are not substantially the same. 

In regard to the first question, it is to be noted that the 
applicants did file a paper in answer to the opposition 
within the time fixed by this Office- and in that jpaper set 
'forth reasons why the opposition should be dismissed. 
1 The Examiner's letter calling for an answer was merely a' 
requirement that the applicants show reasons, if any ex- 
isted, why the opposition should not be sustained and 
registration refused. The applicants were entitled to 
rely upon any matters of defense, whether of law or of 
fact. They did rely upon the defense that the notice on 
its face set forth no sufficient grounds for refusing regis- 
tration, and the Examiner found this defense to be weM 
founded. The first objection made by the appellants to' 
' that answer is entirely technical and without substantial 
' merit. There is no necessity for such refinement of plead- 
ing as is implied in that objection. It is sufficient if the 
parties present to this Office the material which will en- 
able it to make proper disposition of the case upon it' 
merits, and it is unnecessary to insist upon tcch r / 
J^«_ / 









qp 



In regard to the second question, it is not believed «>. 
this Office would be justified in refusing to register a 
irade-marfc as directed by the act of Congress dated Feb- 
ruary 20, 1905, even if it were to conclude that marks reg- 
istered under that act were of no legal effect and void. 
After this Office has concluded that the applicant is the; 
owner of the trade-mark disclosed in his application and- 
that it is not one of those marks the registration of which 
is prohibited it becomes the ministerial duty of the Office 
to register the mark under the act of February 20, 1905. 
Such registration does not create a property right in the 
applicant nor take away the property right of another, 
but is a mere record of the applicant's claim of title. The 
real right of the applicant is subject to investigation and 
determination in suits brought in the courts subsequently, 
either by or against him. The question whether that regis- 
tration constitutes pnma facie evidence of ownership may 
call for a determination as to the constitutionality of the 
law providing for registration. It is believed that this 
Office should leave the determination of this question to 
the courts in the regular way. 

The Supreme Court of the District of Columbia in the 
case of Schumacher v. Marhle (3 Mackey, 32) said: 

We do not think it lies in the mouth of a Government official to 
call in question the constitutionality of a law directing him to per- 
form a purely ministerial duty. If the question was raised be- 
tween other parties, as for instance, in a suit for infringement in 
the use of a label, and the constitutional rights of the parties were 
involved in it, that is to say whether one man was prohibited 
from using it because another man had'registered it as a label, the 
argument might be pertinent, but we do not think it is a question 
which can be raised here. 

It is clear that the decision of the Examiner of Inter- 
ferences must be sustained, unless he was wrong in hold- 
ing that, the marks of the two parties to this proceeding; 
are not so clearly alike as to deceive purchasers. The 
marks are used on the same class of goods, and therefore 
the question of conflict is upon the similarity of the marks 
themselves. 

It appears that the applicants C. A. Knecht and Son 
used as their trade-mark the words "Raven Valley," to- 
gether with the representation of three birds, said to be 
ravens, perched upon the branches of a tree. 

The ground of opposition stated in the notice is as fol- 
lows: 

W. A. Gaines & Company is the sole and exclusive owner of the 
trade-mark for whisky consisting of the words "Old Crow." 

It is also said in the notice of opposition that — 

* * * the whisky is sold by W. A. Gaines & Company both in 
glass and in bulk, and when sold in bulk, the whisky is frequently 
bottled by the customers of W. A. Gaines & Company, under la- 
bels bearing the brand ' ' Old Crow " accompanied by the picture of 
a crow, and the following are specimens of such customers' labels 
which have been in common use among the trade for upward of 
thirty-five years last past. 

No such similarity between the words "Old Crow" and 
the applicants' mark appears as would seem likely to mis- 
lead the public or deceive purchasers. The fact that the 
raven belongs to the same f amil y as the crow is not a suf? 
ficient reason for concluding purchasers would be der 
ceived and mistake one mark for the other. On the con- 
trary, the words "Old Crow" are so distinctive that it is 
not believed that there would j^be any ,'confusion even 
where the representation of a crow is used with the words, 
as shown in the specimens filed with the notice of opposi- 
tion. There is no such similarity in the words or in the 
pictures as to warrant this Office in refusing to register the 
applicants' mark. 

The decision of the Examiner of Interferences dismiss- 
ing the opposition is affirmed. 






urt of Appeals of the District of Columbia. 
Giles Remedy Company v. Giles, ~j 
Decided December 12 1905. 
1. trade - Marks — appeal to Court — Interference; De" 
clared Under Act op 1881. 
A trade-mark interference declared under the aet'ofjtSSl, but 
not decided until after the passage of the act of FebruaryI20, 
190.5, is appealable to the Court ofJAppcalsIofithc District of 
Columbia under the act of ,Ffc|wuary 20,. 1005, where tho only 
application involved has been amended to bring it under the 
provisions of that oc.t. 

2. SAME— SAME— PENDING APPLICATION. 

A trade-mark application which was involved in an interfer- 
ence at the time of the passage of the act of February 20, 1005, 
was a pending application such as might be amended to bring it 
under the^act. 

3. same— Interference— Priority of Adoption and Use. 

Where it appears that Sanford Giles first adopted and used the 
trade-mark and secured registration thereof and subsequently 
the mark was used by him and by Daniel Giles at a single place 
of business under fhe name of the Giles Remedy Company until 
a disagreement between them which resulted in their separation, 
Held, that Sanford Giles was the owner of the mark and that 
judgment of priority must be in his favor. 
i. Same— Same— Same— Right Acquired by Transfer. 

Where a trade-mark registrant is shown to have been the first 
to adopt and use the mark and to have been the. owner at the 
time he secured the registration, he is not to be defeated in an in- 
terference by showing that his opponent subsequently acquired 
title to the mark' from him. Such showing might in appro- 
priate proceedings justify compelling the transfer of cthelccrtifi- 
catc of registration; but it does not justify the holding that the 
later applicant was the first to adopt .and use the mark. 

5. same— Ownership by Partners— Rights Upon Dissolu* 

TION. 

The general rule that when a partner retires from avpartner- 
ship and assents to .the retention by the other partners of the 
possessionot the old place of business and the future conduct of 
the business by them under the old name the trade-mark re- 
mains with the latter has no application to the facts of this 
case. 

6. Same— Same— Same— Withdrawal of Member. 

In the absence of. express agreement a trade-mark used there- 
tofore by one who enters into partnership with others docs not 
at the dissolution of the partnership, caused by the withdrawal 
of the member bringing the mark into the partnership, remain 
the property of the partnership. 

Mr. W. H. Chamberlin and Mr. Geo. L. Wilkinson for 
the appellant. 

Mr. W. C. Jones and Mr. Geo. E. Hamlin fori the a P* 
pellee. 

Dcell, J.: 

Preliminary to a decision as to the correctness of the 
finding of the Commissioner of Patents that priority of 
adoption and use of the trade-mark in issue was by ]the -ap- 
pellee, Sanford F. Giles, we are called upon to determine 
whether this is a case where an appeal lies to this court, a 
motion having been made to dismiss the appeal on the 
ground that this court is without jurisdiction to entertain, 
the appeal. The material faGts disclosed by the record 
will be briefly stated. Under the law of' 1881 a certificate 
of registration of the trade-mark in controversy was 
granted to Sanford F. Giles on June 29, 1897. The Giles 
Remedy Company, a corporation of the State of Illinois, 
on September 15, 1904, made application for substantially 
the same trade-mark, and an interference on October 11, 

1904, was declaredjbetween Sanford F. Giles, the registrant, 
and the application of the Giles Rediedy Company. Both 
parties took proofs, and on the proofs and proceedings a 
hearing was had before the Examiner of Interference who, 
on March ll,1905,fouiiii»«fe,+*or of the registrant, Sanford 
F. Giles. Limit of appeal was fixed to expire March 31, 

1905, and on that date an appeal to the Commissioner was 
duly taken. The decision of the Examiner of Interference 
was affirmed by the Commissioner on June 29, 1905. Un- 
der the law of 1881 an appeal did not lie to this court in in- 
terferences relating to trade-marks. Such appeal was pro- 
vided for by the law of 1905 which went into cll'cct April 1, 
1905. Section 24 of that law made the following provision 
for pending trade-mark cases: 

Sec. 24. That all applications for registration pending in the 
Office of the Commissioner of Patents at. the time of the passes 
of this act may be amended with a view to bringing them. an. 
certificates issued upon such applications, under its proi 
and the prosecution of such applications may bo proceeded 
under the provisions of this act. J 



/?4 



* — ^r- 




7YZ 



The]appellant, being an applicant, on the Oth of April, 
1905, filed its petition asking to amend the application in^ 
volvcd in this proceeding to bring it within the provisions 
of the act, and this petition was received and approved by 
tfaelPartent Office., &A 

We do not see how theJPatent Office ■ceroid have lawfully 
refused the petition, for the application, of the Giles Rem- 
edy Company for registration of its claimed trade-mark 
was pending in the office of the Commissionerjof Patents 
at the time of the passage of the act. While the act did 
not take effect until April 1, 1905, it was passed— that is 
approved— February 20, 1905. On'that date the Exam- 
iner of Interferences had not filed any decision, and of 
course no appeal had been taken to the Commissioner of 
Patents. At the April, 1905, term of this court we re- 
viewed atjlength the question as to whatjwas'a pending 
application for registration of a trade-mark as that term 
was used in the act of 1905, and under our ruling in that 
case, to which reference is made, without again stating our 
conclusions and the reasons therefor, the application of the 
Giles Remedy Company, appellant, is clearly a "pending" 
application and was such not only on the 20th of February, 
1905, when the act was approved, but also on April 1, 1905, 
when it went into effect. Section 7 of the act provides for 
the declaration of an interference between a registered 
mark and an application for the registration of a conflict- 
ing mark and section 9 provides for an appeal in such inter- 
ferences to thiscourt, Appellant is rightfully in thiscourt, 
and the motion to dismiss his appeal must accordingly be 
denied. 

This brings us to the consideration of the merits of the 
appeal. The facts, so far as they are material to the de- 
cision of any questions which are properly before us in this 
proceeding, are substantially these. . m _ __ 

Daniel S^Gilcs, Sr., through whom the"Gilos Remedy 
Company, appellant, became vested with any claim of title 
it may have to the trade-mark in question, undoubtedly 
originated the medicine in connection with. which the 
trade-mark is used, and disposed of it. by gift or sale, m 
small quantities for years before Sanford F. Giles- put the 
medicine on the market, Both father and son sold the 
medicine before, the trade-mark came into being. It is 
equally well proven that Sanford F. Giles originated the 
trade-mark, and in September, 1894, caused labels for hot- 
ties and also other printed matter, to be printed by a prun- 
ing 'establishment located at Kansas City. These labels \ 
had on them a seal with serrated edges and : upon the seal 
the words "Giles Magic Lotion." At that time he lived at 
Pleasanthill, Mo., and was by occupation a telegraph op- 
erator. For a year or more prior to September, 1S94, he 
had sold the medicine, probably using the trade-mark and 
had put it out under the name of the Giles Remedy Corn- 
puny. He was undoubtedly the first toluse that trade- 
name. In l&96he*emoved to Kansas City, and foratime 
lived with his father, both engaged in putting the medicine 
on the market in a happy-go-lucky sort of a way. There 
was no partnership, at least at the commencement ofiheir 
relations, and, so long as they continued to live at Kansas 
City, it can hardly be said that this record .discloses that 
their relations aui< unted in law to« partnership relation. 
A bank account was kept by Sanford but that does not 
prove that the business carried on was his, nor does it tend 
to prove a partnership. From an examination of the tes- 
timony we conclude that each sold what he could and used 
the proceeds as he pleased; that each sought to make a 
living out of the business, and as long as one had enough 
for that object he cared little what amount, of money the 
other made out of the business. It was a relation that was 
quite natural between a father and son whose feelings fur 
each were natural, and such as often exists between father 
and son. The business at. first was small, and each worked 
in an independent, sort of a way, and each in his own way 
sought to increase the business. We fail to discover suffi- 
cient to warrant us in a conclusion thai in the spring or 
18OT, when Sanford i .-.' cuted and Bled the application for 
registration of the trade-mark, he bad divested himself of 
the right to file the application in bis own name so that a 
trade-mark could lie lawfully issued to him upon his ■ 



IK 



I 



application. No doubt his father thought, and had a right, 
to think, that the tAde-mark was to be used by him as well 
as by Sanford. l&t the latter having been^the first to 
adopt and use the trade-mark, and not having parted with 
his interest in it, and having continued its use, had not by 
acquiescing in its use by his father in the manner shown 
forfeited his right to claim the mark as his own property. 
Conceding that his father furnished the money used in pro- 
curing the trade-mark, we cannot, in view of the loose way 
in which the business was carried on, infer or find from 
that fact;that a partnership existed between them. It was 
in fact at that time the same as though two peddlers living 
under the same roof, made up their packs without paying | 
much attention to who paid the most for the. goods they 
sold, or what became of the proceeds so long as one if lie 
had more money than he needed would lend it to the other. ' 
It was a very natural relation, under the circumstances, to 
exist. We hardly think that the father's right to use the ' 
mark had in the spring of 1897 ripened into a legal right 
that he could then have enforced. Undoubtedly as the 
years passed and -the^business increased, and books were : 
kept and a bank account was kept in the name of the Giles 
Remedy Company (a trade-name devised by Sanford F. 
Giles) against which both could check, there developed a 
more business-like relation. But as we look at the ques- 
tion we are called upon to decide, any finding we might 
make as to the later relations between the father and son, 
and their several relations to the business, would be of no 
moment, Another forum is provided for the determina- 
tion of those questions. If Sanford F. Giles was the first, 
to adopt and use the trade-mark in question, and riot hav- 
ing ceased to use, or not having parted with the legal title 
to register the mark when lie did— all which we have 
found— it would be a vain thing for us to find that after 
the registration he had parted with an interest, or any part, 
of the exclusive right to use the mark. The title to the 
certificate of registration, if claimed under some aet or set 
ot acts done or performed after its issue, cannot as a rule 
be determined in an interference proceeding. Such ques- 
tion is, we apprehend,,^ be tried in a proceeding brought 
to compel the assignment of the issued certificate, or by- 
some analogous proceeding. There may hereafter be 
found some exception to the general rule, but tins is not 
one and we have now none in mind. An interference pro- 
ceeding under the trade-mark law is instituted to deter- 
mine priority of adoption and use, and when it is found 
that one of the parties to the interference was the first to 
adopt and use the mork in accordance with the require- 
ments of the law, and was the sole owner of the mark when 
he applied for and received the certificate of registration 
the inquiry instituted by the interference proceedings ter- 
minates. If a later applicant seeks to re-register the mark 
for any lawful reason, and it appears that his title is based 
upon the same adoption and use as claimed by the prior 
registrant it cannot be successfully contended that he has 
any standing in an interference unless, at»Jeast, he shows 
that the entire, right, title and interest in the mark has be- 
come vested in him. Appellant has failed to show this, 
for any right vested in the corporation, appellant, is such 
title as Daniel S. Giles, Sr., had in the mark when he at- 
tempted to assign all interest in the mark to it and caused 
the application for registration to be filed in its name. 
Daniel S. Giles, Sr., is not shown to have had at any time 
such title as would have permitted him to register the 
mark. He did not originate it nor first put it in use. Noth- 
in", so far as this record discloses, vested in him at any 
time the exclusive right to its use. That after its registra- 
tion by Sanford F. Giles he acquired some rights we think 
the record discloses. At the best those rights are not 
shown to be exclusive or to Warrant a judgment or priority 
in his favor. The, partnership, if it be admitted that a 
partnership existed between father and son, .did not vest 
him with the exclusive righl to the mark; .and when the 
relation was terminated by the father's annexingilhe bank 
account, and the departure of the son fTrom the common 
place of business, the. condition that then arose did not in 
law vest, the father with all rights to the mark on the 
ground tHqjt the son had abandoned his rights. 




The propositions of law advanced by the appellee arc 
well founded and sustained by many adjudicated cases. 
Briefly summed up they are that registration of a trade- 
mark is grantahle only to its owner, and such owner is the 
one first to adopt and use the mark as provided by law. 
The Trade-Mark Acvs of 1881 and 1905, and the adjudica- 
tions under the former act all sustain the proposition. 
That the right to use a trade-mark owned by a partner- 
ship—after its dissolution, generally is vested in all of the 
members who continue in the same line of trade. (Mi- 
nendez v. Holt, 128 U. S., 514.) That in the absence of an 
express agreement, a trade-mark lised theretofore by one 
who enters the partnership does not at the dissolution of 
the partnership, caused by the withdrawal of the member 
bringing the mark into the partnership, remain the prop- 
erty of the partnership. (Am. & Eng. Encyc. of Law, 2nd 
Ed., Vol. 28, p. 406, and cases there cited.) 

It is undoubtedly true as urged by appellant that when 
a partner retires from a partnership and assents to the re- 
tention by the other partners of the possession of the old 
place of business and the future conduct of the business by 
them under the old name that the trade-mark remains with 
the latter. The facts in the present case do not warrant 
the application of that rule of law for the retirement must 
be voluntary, or thereafter acquiesced in, and the retention 
of the business must have also been acquiesced in and not 
practically forced. 

It appears that the parties to this interference arc en- 
gaged in a litigation pending in the courts of the State of 
Illinois, and their respective rights to the registered trade- 
mark can there be determined. As before stated we have 
no call to determine that question having found that San- 
ford F. Giles lawfully registered the mark in controversy 
and that the appellant has failed to show that after such 
registration it became the sole owner of the registered mark 
and of all rights thereto pertaining. 

In our opinion the Commissioner of Patents was right in 
awarding judgment of priority of adoption and use of the 
trade-mark to the appellee, Sanford F. Giles, and his de- 
cision should therefore be affirmed. The clerk of the court 
will certify this opinion, and the proceedings in tfiis court 
in the premises, to the Commissioner of Patents,' according 
to law. Affirmed. 



OOMMISSIONEE'S DE0ISI0BTS. 




\im 




W. H.;Jojjes & Co. v. Caklton Iatpoetation Company. 

Decided December 29, 1905. 
Trade-Mark Interference— "OldJJay" and "Blue Vat." 
There is such a close resemblance between a mark consisting 
of the words "Old J" or -Old Jay Rye" in connection with a 
representation of a blue jay and the words "Blue Jay" as to 
cause confusion and bring about a conflict of rights. 
Appeal on motion. 

TRADE-MARK FOK WHISKY. 

Mr. A. E. Wallace for^Jones & Co. 
Mr. Frederic B. Reefer for Carlton Importation Com- 
pany. 

Allen, Commissioner: 

This is an appeal by Carlton Importation Company 
from the decision of the Examiner of Trade-Marks denying 
its motion for dissolution of the interference. 

The issue is defined as follows: 

The words "Blue Jay," or "Old Jay," for whisky. 

The appellant uses the words "Old J" or '-'Old Jay 
Eye" in connection with the representation of a blue jay, 
whereas Jones & Co. use the words "Blue Jay." Both 
marks as* used include other elements; but, as pointed out 
by the Examiner, the idea embodied in both which will 
attract attention is that of the bird known as a jay. 

I am satisfied that there is such close resemblance be- 
tween the marks as to cause confusion and bring about a 
conflict of rights. The Examiner was right in refusing to 
■dissolve the interference, and his decision is affirmed. 




Wl 






/&><} 




£/ ^ ^ 




The Buchanan-Anderson-Nelson Company v. Breen & 

Kennedy. 

bedded Dea mbertt, 1905. 

Tkade-M m:k OPPOSITION— "Henderson" Not Refused on 
"Andi I 

A trade-mark including the word " Henderson" is not to be 
refused registration because an entirely different mark inelud- 
ing the word " Anderson " bad been used previously by another 
upon the same class ol g Is. 

Appeal from Examiner of Interferences. 

1 

TRADE-MAKE *OR WHISKY. 

.)/;•. Jas. L. Hopkins and Mr. John S. Barker for the 
Buchanan-Anderson-Nelson Company. 

Mr. Arthur !•:. Wallace for Breen & Kennedy. 
Allen, Gomm issioru rv 

This is an appeal by Buchanan-Anderson-Nelson Com- 
pany from the decision of the Examiner of Interferences 
dismissing its notice of opposition to the registration of a 
trade-mark by Breen & Kennedy. 

The applicants' mark is used on whisky and is de- 
scribed as follows: 

Tin' v. ord " Henderson" on a ribbon design, beneath which is a 
shield upon which is the monogram " B & K." 

The Buchanan-Anderson-Nelson Company opposed reg- 
istration on the ground that the mark so nearly resembles 
a mark owned and used by it upon the same class of goods 
as to cause confusion and mislead purchasers. Its mark 
is described in the notice of opposition as follows: 

The trade-mark consists of tho representation of a Maltese or 
[ilar cross and a panel below the same bearing the word " An- 
derson " in white letters, the cross and panel appearing in red and 
i having a border in gold, as shown in the accompanying fac- 
v be arranged in connection with any suitable de- 
tive matter "without materially altering tho character of the 
trade-mark, the essential feature of winch is the representation of 
a Maltese or Templar cross and a. panel below the same and hear- 
ing the word "Anderson" in white letters, the cross and panel 
appearing in red and each having a border in gold. 

This mark was registered December 29, 1896, No. 
29,373. It appears from consideration of the marks them- 
selves and from the argument made by the appellant that 
the oDly possible question as to confusion between the 
No, 7.] 






marks arises from the use of the names "Anderson" and 
"Henderson." All other features of the marks are so en- 
tirely dissimilar as to furnish no possible basis for confu- 
sion. In its brief before the Examiner the appellant said : 

The solitary question presented upon this point is whether or 
not, the resemblance between the two words "Henderson" and 

Anderson" is calculated to deceive and to mislead the public 
into purchasing and consuming Breen & Kennedy's whisky under 
the false belief that it is the whisky of the Bucbanan-Anderson- 
Nelson Company. 

A mere inspection of the applicants' mark shows that 
there was no effort to copy or simulate the appellant's 
mark, since, as above stated, there is not even an allega- 
tion of similarity except as to the names Anderson and 
Henderson. Those names are both well known, and it is 
believed that there is no likelihood that purchasers will 
assume that the word "Anderson" indicates the same' 
party or owner as the word "Henderson." On the con- 
trary, it is believed that they will know at once that the 
parties are different. 

The decision of the Examiner of Interferences dismiss- 
ing the notice of opposition is affirmed. 






/?0. 






1 




^/^C /j2 




Winand v. The P. J. Dbury Company. 

Decided December 28, 1906. 

1. Trade-Mark— Opposition Filed Too Late— Office 

out Jurisdiction. 
This Office has no authority to entertain a notice of opposi- 
tion to the registration of a trade-mark fUed more than thirty 
days after the publication of the mark. 

2. Same— Opposition to Registered Mark— Moot Question. 

Where opposition is made to the registration of a mark and it 
appears that the mark has been registered, the opposition will be 
dismissed as raising a moot question. 
On appeal. 

trade-mark for whisky. 
Mr. Arthur E. Wallace for Winand. 
Mr. J. Nota McGill for The P. J. Drury Company. 
, Allen, Commissioner: 

This is an appeal by J. P. Winand from the decision of 
the Examiner of Interferences dismissing his notice of op- 
position to the registration of a trade-mark by The P. J. 
Drury Company. 

It appears that the applicant's trade-mark was pub- 
lished in the Official Gazette of May 16, 1905, and that 
no notice of opposition was filed within thirty days there- 
after, as provided in section 6 of the Trade-Mark Act; but 
on July 6 J. P. Winand filed the notice of opposition which 
is here under consideration. At the time the notice was re- 
ceived the application had been passed to issue and was 
in the hands of the printer. On July 11, 1905, the mark 
was actually registered. 

It appears that this Office did not notice that .the mark 
was registered, and the applicant did not call attention to 
the fact, and therefore on August 8 the applicant was 
called upon to file an answer to the notice of opposition. 
Such answer was filed on September 8, and thereafter 
times were set for taking testimony. The present attor- 
ney for The P. J. Drury Company was then appointed and 
took charge of the prosecution of the case, and on October 
11 he filed a motion to dismiss the opposition. That mo- 
tion was granted, and thereupon this appeal was filed. 

It is to be noted that section 6 of the Trade-Mark Act 
providing for opposition distinctly says that if no oppo- 
sition is filed within the thirty days allowed registration 
shall be granted to the applicant. The statute gives this 

[Vol. 120, 

Office no authority to extend the time fixed for opposition . 
and therefore it is without jurisdiction to conduct pro- 
ceedings on an opposition filed after that date. The Ex- 
aminer was therefore right in dismissing the opposition 
upon this ground. In the present case, furthermore, since 
the trade-mark has been registered by the applicant, pro- 
ceedings in opposition to that registration are clearly of 
no effect and useless. The sole purpose of the opposition 
was to prevent registration, and it is very clear that such 
result cannot be effected now even if it should be concluded 
that the mark should not have been registered. 

The decision of the Examiner of Interferences is affirmed. 



O 



#-i^. 



2- ~Z-?T3 



/^Q£ 



7l?*& 




'""';. Ex parte G winn ' Bros. & Co. 

Decided January 4, 1906. 

Trade -Mark— Associated Representations op . 
Sea-Monster— Anticipation. 
A trade-mark consisting of the representation of a sea-mon- 
ster associated with an anchor represented as standing verti- 
cally upon its point and having the head of the sea-monster 
protruding from between the anchor-arms and the body of the 
sea-monster entwined spirally about the shank of^thc anchor 
Held not registrable in view of the prior registration of a trade, 
mark consisting of an anchor and the arbitrarily-selected word 
, " Anchor ", placed across said representation. - 

Onjappeal. 

trade-mark pob wheat-flour. 

Mr. W. H. Witts and Mr. 0. T. Belt for the appellants. 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register a mark described as fol- 
lows: 

Our trade-mark consists of the representation of a sea-monster 
associated with an anchor represented as standing vertically upon 
its point and having the head of the sea-monster protruding from 
between the anchor-arms, and the body of the sea-monster en- 
twined spirally about the shank of the anchor. 

The ground of refusal is that this mark so nearly re- 
sembles a registered mark as to cause confusion. The 
mark referred to is that of D. & A. Luckenbach, No. 16,670, 
June 4, 1S89, which is said to bo used upon goods of the 
same character as the appellants'. It is said in this regis- 
tration: 

The trade-mark consists of the representation of an anchor 
and the arbitrarily-selected word "Anchor" placed across said 
representation. 

Both marks therefore include a representation of an 
anchor. 
In connection with this appeal a paper has been filed, 

saying: 

Your orator, the associate attorney, having been engaged to an- 
swer this appeal, finds the description or claim appealed not to be 
a true and correct description of application. It fails to identify 
the Aldine device. 

The same paper includes a proposed amendment to the 
application seeking to avoid the reference cited. It is 
clear that such amendment should be considered, if at all, 
by the Examiner in the first instance. 

It is held that the Examiner was right in refusing regis- 
tration of the case as presented, and therefore his decision 
must be affirmed. If he concludes that the proposed 
amendment avoids the reference cited, he is at liberty to 
enter it and act upon the case in view thereof. 

The decision of the Examiner is affirmed. 



^ 



COMMISSIONER'S DECISIONS. 




Johs Wagner & Sons v. Thixton, Millett & i 

Decided January 4, 1906. 

1. Trade-Marks— Opposition— Fee Essential to Date. 

Bs The fee constitutes a necessary part of the notice of opposition , 
since it is required to be paid on filing such notice. An effective 
date cannot be given to an opposition earlier than that upon 
which the fee was paid. 

2. SA^iE-fOpposmoN Filed Too Late. 

The Office has no authority to extend in any case the period 
allowed by law for oppositions, and where the fee was paid more 
than thirty days after publication Held that the opposition 
came too late to be entitled to consideration. 

Appeal .from Examiner of Interferences. . ' 

trade-maeE Fqe wiiiskt. 

Mesirs. Wuhlcrsheim & Fairbanks for Wagner & Sons. 

Mr. Arthur E. Wallace for Tkixton, Millett & Co. 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Interferences dismissing from consideration certain papers 
filed by John Wagner & Sons in opposition to the registra- 
tion of a trade-mark by Thixton, Millett & Co. 

It appears that the applicants' mark was published in 
the Official Gazette on September 5, 1905, in accordance 
with section 6 of the act of February 20, 1905. On Octo- 
ber 3, 1905, the appellants filed certain papers opposing 
registration of the mark published, and on October 9, 1905, 
they paid to this Office a fee of ten dollars as the fee re- 
quired by law in cases of opposition. The Examiner held 
that the effective date of the opposition must be taken as 
the date when the fee was paid, and as this was more than 
thirty days. after publication the opposition came tocf htte 
to be entitled to consideration. 

Section 6, aft^r 'providing for publication of marks, says; 

Any person who believes hi 1}*.ould be damaged by the registra- 



tion of a mark may opposethjj samj 

stat' 

day 



. _ - by filing notice of opposition, 
stating the grounds therefor, ift -ihtf. Pa tent Office within thirty 



fs after the publication of tWc"miH:lt.^ra£ht to £e registered.. 

* * If no notice of opposition is filed wltMfi said'time tha. 
Commissioner shall issue a certificate of registration therefor, as 
hereinafter provided for. 

Section 14 of the law includes the following: 

That the following shall be the rates for trade-mark fees : 
******* 

On filing notice of opposition to the registration of a trade-mark, 
ten dollars. 

It is clear that the fee constitutes a necessary part of the 

notice of opposition, since it is required to be paid "on 

filing" such notice. The statute is explicit in terms, and 

\iere can be no doubt as to the intent. To hold that the 

Vnt was different from that clearly expressed in the law 
vjd be contrary to fundamental rules of construction 

.. would cause hopeless confusion. If the fee is not to 
be paid 'on filing,'' when is it to be paid? Can the one op- 
posing secure delay in registration by merely filing in this 
Office papers and thereaf ier make up Ins rnind whether or 
not it is advisable to go to the expense of paying the fee? 
If so, how long can he wait ? 

These questions answer themselves, since it is clear, both 
on principle and according to the terms of the statute, that 
the one opposing has no standing whatever before this 
Office until 'ie has paid the fee fixed by statute. 

'I'ji' j Office has no authority to extend in any case the 
period allowed by law for oppositions, and since the oppo- 
si:ion here was made too late the Examiner was right in 
dismissing it. 

The decision of thcExaminerof Interferences is affirmed. 





n 

COMMISSIOUEE'SHDEOI 
T Ex pakte Paragon Malt Extract Company. 

Decided January 31, 1906. 
.Teade-Maeks— Descriptive Mark Refused— Peerless. 

The word " Peerless " refused registration as a trade-mark on 
the ground that it is descriptive. 

On appeal. 

trade-mark for malt extract. 

Messrs. Mason, Fewwick & Lawrence for the applicant. 

Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register the word "Peerless" as 
a trade-mark for malt extract. 

The ground of refusal is that the word is descriptive. 
The word "Peerless" is undoubtedly an ordinary descrip- 
tive word which any one has a right to use in any case 
where it is properly descriptive and not deceptive. The 
word conveys the idea that the article to which it is ap- 
plied is of superior quality and is unequaled. It is not 
capable of exclusive appropriation as a trade-mark by any 
individual. {Ex parte Peerless Carbon Black Company, 81 
O. G., 803.) 

jit The decision of the Examiner of Trade-Marks refusing 
registration is affirmed. 



COMMISSIONER'S 



ICISIONS. n ^ 
Ex paete Tee J. C. HrescmiAN CompanyT 



Decided January 31, 1006. 
Teade-Maeks— Immaterial Variations. 

Where the trade-mark as a whole seems to be a mere imita- 
tion of Ostermoor's, made with immaterial variations, and the 
differences are clearly not such as would avoid confusion between 
the marks by purchasers, the mark should not be registered. 

On appeal. 

trade-mark for mattresses. 
Messrs. Minturn & Woemer and Mr. Ernest W. Brad- 
ford for the applicant. 

Am-en, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register a mark described as fol- 
lows : 

The trade-mark consists of the representation of a felt mattress 
•with part of the hmng and cover removed to expose the felt layers, 
the exposed layers being spread apart, and the baby represented 
its lying upon the finished portion of the mattress, all inclosed in 
border-hue eompnsmg a straight horizontal base, with an arched 
top with ogee portions connecting the top with the case. 

The ground of refusal is that this mark so nearly re- 
sembles a registered mark as to confuse the public and de- 
ceive purchasers. The registered mark is that of Oster- 
moor & Company, No. 34,063, January 23, 1900. 

The registered mark does not include the border-line or 
the baby, but includes everything else referred to in the 
appellant's above-quoted description of its mark. The 
mattress with the exposed layers spread apart is un- 
doubtedly the most prominent feature of the appellant's 
in;ark as shown, and is strikingly like the mattress with ex- 
' posed layers constituting the .registered mark. 

The appellant says that since the mark is to be used 
upon mattresses a picture of a mattress is not trade-mark 
subject-matter and is to be disregarded in considering its 
mark. It urges that the baby and the border-line consti- 
tute its trade-mark, and that therefore the registered mark 
is no anticipation. 

An examination of the case shows that the picture of the 
mattress is an integral part of the mark and is inseparable 
from the other features. The appellant describes it as a 
part of the mark, and it clearly is a part of it. The mark 
as a whole seems to be a mere imitation of Ostern:oor's 
mark with immaterial variations. The differences arc 
clearly not such as would avoid confusion between the 
marks by purchasers. 

The decision of the Examiner of Trade-Marks is right 
and is affirmed. 



/s 



' "commissioners decisions. 




m?T Ex pabte Sleepy Eye Milling Company. 

Decided March 2, 1906. 
TRADE MARKS-PUBLICATION NO BAB TO REQUIREMENT OF DE- 

The fact that" the trade-mark lias been published is no good 
"reason why the Examiner of Trade-Harks may not require a 
description of .the trade-mark as shown in the drawing. 

; On appeal. 

t trade-hark for wheat flock. 

' Mr. PatricTc H. Gunclcel for the applicant. 
Allen, Commissioner: 

This is au appeal from the action of the Examine, of 
Trade-Marks requiring that the application include a de- 
scription of the trade-mark as shown in the drawing. 

The Examiner's action was in accordance with the ex- 
Dress requirement of the statute as fully set fortn mex 
K neTarOorundum Company, (118 O. G., 2250.) *, 
fact that this mark has been published does not preven 
the refusal of registration where good ground for refusal 
appears. {Ex parte Cluett, Peaiody & Company, 120 

°'Thede2ion of the Examiner of Trade-Marks is .finned. 



COMMISSIONER'S DECISIONS. 




Ex parte Kops Brothers. 
Decided March 10, 1900. 
Trade-Marks— Mark Descriptive. 

The words " In Curve " as a trade-mark for corsets Held de" 
v scriptive of the goods and registration denied. 

On appeal. 

trade-mark for corsets, etc. 

Mr. Earold Serrell for the applicants. 
Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register the words "In Curve" as 
a trade-mark for corsets. 

The Examiner's refusal to register is based on the ground 
that the mark is descriptive. The appellants contend 
that the words are merely fanciful in their application to 
the goods mentioned. He attemp ts to make a distinction 
between the condition of the goods when on sale and their 
condition when in use. I think the distinction is of no con- 
sequence here. "In Curve" is believed to be clearly de- 
scriptive of the goods designated. 

The decision of the Examiner of Tradc-Marksis affirmed. 



/>/ S^/6?C> 



COMMISSIONER'S DECISIONS. 



i 




The Windsoe Milling andEletatoe Company v i 

« Brdnnee. 

Decided March 14, 190S. 

On appeal. : 

Trade-Maeks— Interference— Motion to' Dissolve — Con- 
sent of Parties. 
Where the trade-marks involved in an interference include 
as their dominating feature the same name by which the goods 
would be known, it is immaterial that there are differences in the 
1 appearance of the actual labels, and a motion to dissolve the 
interference Jon the ground of non-interference infact must be 
. denied, notwithstanding both parties consent to it. 
trade-mark foe flour. 
Mr. P. H. GuncJcel for The Windsor Milling and Eleva- 
tor Company. 

Mr. Hiram A. Sturges for Brunner. 
Allen, Commissioner: 

This is an appeal by The Windsor Milling and Elevator 
Company from the decision of the Examiner of Trade- 
Marks refusing to dissolve the above-entitled interference. 
A motion for dissolution was made on the ground that 
there is no interference in fact, and both parties urge that 
the motion should be granted. The appellant's trade- 
mark is described in its application as follows: 

The trade-mark consists of the words " Blue Bell " and the repre- 
sentation of bluebell leaves and flowers. 

Brunner's mark is described in his application as follows: 

My trade-mark consists of the words "Blue Bell" associated 
with the representation of a swinging bell being suspended by a 
ribbon, and flowers and stalk of the bluebell imprinted thereon, 
all inclosed in concentric circles. 

It thus appears that both parties use the words "Blue 
Bell," and an examination of the specimens of the marks 
as actually used shows that these words appear on both in 
large type. They constitute an essential feature of the 
mark, and it is believed that the goods of both parties will 
undoubtedly be known as the "Blue Bell Flour." In the 
case of marks like these, including as their predominating 
feature a name by which the goods would be known, it is 
immaterial that there are differences in the appearance of 
the actual labels. The goods will be identified by the 
name, and consequently purchasers will be misled and de- 
ceived. 

It must be held that the marks are so nearly alike as to 
be likely to deceive purchasers and mislead the public, and 
therefore I cannot grant the motion for dissolution, not- 
withstanding the fact that both parties consent to it. 

The decision of the Examiner of Trade-Marks is affirmed. 





■L 






/&/. **f: /^p& 



COMMISSIONERS DECISIONS. 




r " Schneider v. The Union Distilling Co. 
f Decided March U, 1906.) 






1. Trade-Hark Interference— Dissolved on Mark Eegis- 

• . ' - > I flSB CT OP ] !70. 

gp Where an interference declared between two applications tor 

registratii a of b trade-mark was dissolved on reference to 

aznarkri edb third party on March 14, lSTl^Held that 

the registration under the act of L'70, and oyer thirty years ago, 

is a proper reference until overcome in some way by thcappli- 

F cant. 

2. Same— Same— Reference to be Overcome Not by Inter- 

ference Proceeding, but by Affidavits. 
Where reference is made to an expired registration, applicant's 
remedy is not by an interference proceeding with the registered 
mark, since interferences can be declared only as to applications 
and existing marks, but by a showing in the form of affidavits 
to overcome the presumption that this registrant under the act 
of 1870 is still the owner of the marl:. 

3. Same— Same— If Reference Overcome, Present Inter- 

ference to Continue. 
Wherein a trade-mark interference a reference is found in the 
form of an expired registration under the act of ISTfi, Held that 
if a showing is made overcoming the presumption of ownership 
raised by the reference the interference should continue. J 

On appeal. 

TRADE-MARK FOR WHISKY. 

Mr. Titian W. Johnson for Schneider. 

Mr. Arthur E. Wallace for The Union Distilling Co. 
Allen, Commissioner: 

This is an appeal by The Union Distilling Co. from the 
decision of the Examiner of Trade-Marks dissolving the 
above-entitled interference on the ground that the mark of 
the issue is a known trade-mark which was adopted and 
used by another prior to the date of adoption alleged by 
the present applicants. 

I As evidence of such prior adoption and use the Exam- 
iner calls attention to the mark registered by Mills, John- 
son and Company on March 14, 1871. 

The appellant calls attention to the fact that the reg- 
istration cited was made under the unconstitutional act 
of 1870 and to the further fact that the period of thirty 
years for which the registration was granted has expired. 
It therefore urges that such registration is not a valid ref* 
erence, since it is not prima facie evidence of ownership 
by the registrant. The question here raised was consid- I 
ered and decided in the case of the Star Distillery Com- I 
pany, (119 O. G., 984,) wherein it was held that registrar i ' 
tions under the act of. 1870 are to be regarded as proper 
reference; until overcome in some way by the applicant. 
The appellant asks that, if the ruling in the above-cited 
case is adherer] to, it be permitted to overcome the regis- j 
tration as a reference by an interference proceeding. It 
is clear, however, '■ : can bo no interference, since 

faterferenci -■ can b dec] ed only as to applications and 
existing i . .. . The appellant's remedy would 

seem to be n t an in rfei •• . bu ashowi a the form 
of affidavits tending to oven : sumption that 

there. under the act i owner of the 

mark. iled, a coni nuance of the 

pre e vill nai f How. 

The Examini . the interference 

in the absence of a showing tending to overcome the ref- 
erence cited, and therefore his decision is affirmed. 



J 



COMMISSIONER'S DECISIONS 

Lewis & BeoteAs' Company v. Phoenix Paint &Var- 

nisii Company v. National Lead^Company. 
-n DecidedlMarchmAWOS. i 

L Trade-Mark interference— Admission of Amendments 
and Disclaimers. 
There is nothing in' the trade-mark rulespn regard.to the ad- 
mission of amendments and disclaimers, butjlunder liulel-H 
they may be entered [in accordance with the provisions of Kule 
107 ol.tlie rules relatinglto applications for patents. 
2 S4ME — same— Practice. W 

Where a disclaimer is filed hi a trade-mark application in- 
volved in an interference, Hetd that judgment should be en- 
tered disposing of the claims of the parties to tho matter dis- 
claimed. .. «.- «$«£=> .» 

3. Same-Same-Same. . ' . , 

Where the disclaimer covers only a part ot the issue, judgment 
should be entered^ to that part, and if there is any question^ 
to the existence of ah'interf erence as to what remains the cases 
f should be referred to the Examiner of Trade-Marks for consid- 
eration, i ........ 

I On appeal. *S 

trade-mark for paints, stains, etc. 
Mr. William T. Norton for JohnT . Lewis AV Brothers' 
Company. -"*"""' 

}' Mr. T. W. Johnson for Phoenix Paint & Varnish Com- 

pany. '" -•" -'• * 1 '' 

Messrs. Briiton & Gray for National Lead Company. 

Allen, Commissioner: ' 

This is an appeal by the Phoenix Paint and Varnish 
Company from the decision of the Examiner of Interfer- 
ences refusing to admit'an amendment andjdisclaimer filed 
by it in the above-entitled interference. 

There is nothing in the trade-mark rules in regard to the 
admission of amendments and disclaimers, and therefore 
; under the provisions of Rule 44 the^ authority for the ad- 
^mission of the amendment and disclaimer in this case must 
he found, if at all, in the rules relating to applications for 
patents. Rule 107 of those rules provides for the filing of 
a disclaimer and for the entry of judgment in view thereof. 
The appellant here does not wish judgment entered upon 
the disclaimer, but wishes the interference dissolved, and 
therefore it is not asking for action in strict accordance 
with Rule 107. 

The appellant wishes to disclaim the right to use the 
mark upon the particular goods specified by the National 
Lead Company in its application and by amendmentjto 
confine its application to specific goods not mentioned by 
the National Lead Company. The Examiner of Interfer - 
ences was of the opinion that the particular goods dis- 
claimed and the particular goods to which claim is still 
made are of substantially the same descriptive, properties 
and that unless and until all of the goods are, disclaimed 
| the interference must proceed. 

It is unnecessary upon this appeal to determine whether 
the goods are substantially the same. The question here 
is as to the procedure rather than the merits. The appel- 
lant contends that the Examiner of Interferences should 
enter the disclaimer and amendment as a matter of course 
and forward the cases to tho Examiner of Trade-Marks to 
determine whether or not there is an interference between 
the application:; aft« amendment. 

It is believed that after a disclaimer is filed there is no 
necessity for continuing the interference as to the matter 
disclaimed; but it is also believed that there should be, a 
judgment entered disposing of the claims of the parties to 
that matter. Under Rule 107 a judgment is entered based 
upon tho disclaimer, and no reason 13 seen why the same 
action should not be taken in trade-mark cases. Where, 
as in tho present case, the disclaimer covers only a part of 
lie, judgment should be entered as to that part, and 
if there is any question as to the existence of an interfer- 
ence as to what remains, the cases should be referred to the 
ler of Trade-Marks for consideration. 
The Examiner's action refusing to enter the disclaimer is 
reversed, and the case is remanded for action in accordance 
with the views herein stated. 



— 



COMMISSIONER'S DECISIONS, 



/f~L 



Bass, Eatclifp & Gketton, lau .,v. Habthann Bkewins 

ES a . . ._ „jm», Company. $ 

r Decided March 19, 190S. 

1. Trade-Marks— Notice of Opposition— Time for Filing. 

Where tine notice of opposition to the registration of a trade- 
mart was filed one day after the expiration of the thirty days 
allowed by law, Held that said notice is of no force or effect. " 

2. Same— Same— Must Be Made by Executive Officers of 

Corporation. 
Where a notice of opposition is filed in behalf of a corporation. 
Held that the oath should be furnished by one of the executive 
officers of said corporation, together with a statement of his 
% authority to act as the agent of the corporation. 

3. Same— Same— Dismissed When Made by Attorney. 

Where a notice of opposition filed in behalf of a corporation 
was made by its attorney, Held that there is no more ( authority 
for accepting the notice of opposition and oath of an attorney 
for a corporation than for accepting a corresponding notice 
and oath for an individual, and the Examiner was right in dis- 
missing the opposition. 

4. Same— Amendment to Application— Republication Unnec- 

essary. 
Where after the publication of the mark an amendment is 
made to the application for a trade-mark eliminating some of 
the goods upon which the mark is used, Held that there is no 
necessity for republishing the trade-mark. 

Appeal from Examiner of Interferences. 

TRADE-MAEE FOR LAGER-BEER. 

Mr. F. W. Smith, Jr., and Messrs. Mason, Fenwick & 
Lawrence for Hartmann Brewing Company. 

Mr. "Arthur Steuart for Bass, Ratcliff & Gretton, LjgL, 
Allen, Commissioner: 

This is an appeal by Bass, Ratcliff & Gretton, Limited, 
from the decision of the Examiner of Interferences dis : 
missing its opposition to the registration of a trade-mark 
by the Hartmann Brewing Company. 
' The ground of the dismissal was that the notice of oppo- 
sition and its supporting oath were not made by Bass, 
Ratcliff & Gretton, Limited, but by its attorney. 

It appears that the applicant's mark was published in 
the Official Gazette on May 9, 1905, and that on June 7, 
1905, notice of opposition was filed in behalf of Bass, Rat- 
cliff & Gretton, Limited, by Mr. Arthur Steuart as attor- 
ney. On June 9 notice of opposition was filed on behalf 
of Bass, Ratcliff & Gretton, Limited, by " John Lambrick, 
'secretary." This last notice was filed one day after the 
expiration of the thirty days allowed by law and is there- 
fore of no force or effect. The opposition can be sustained, 
if at all, only upon the notice filed by Steuart as attorney. 

In Martin v. Martin & Bowne Company (119 O. G., 
962) it was held that the notice of opposition must bo 
signed and sworn to by the party who believes that he 
would be damaged by registration, and not by his attorney. 
That decision has been affirmed by the Court of Appeals 
of the District of Columbia. In the present appeal it is 
said that Bass, Ratcliff & Gretton, Limited, is a corpora- 
tion and can act only by agent, and it is urged, therefore, 
that the opposition and affidavit made in its behalf by its 
attorney is a compliance with the law. It is urged that 
;the requirement for the persona] oath of the one opposing 
cannot apply and was not intended to apply to a corpora- 
tion. 



1 'In regard to this matter it may be said that a corporation 
•can act by its executive officers when it is necessary, and 
In the present case it is thought that the oath should be 
furnished by such an officer, with a statement of his au- 
thority to act as the agent of the corporation, 
gjf As pointed out in the case of Martin v. Martin & Bowne 
Company, supra, the statute clearly and specifically re- 
quires that "said notice of opposition shall be verified by 
the person filing the same," and this is the same "person 
who believes he would be damaged by the registration of 
a, mark." (Sec. 6.) 

Section 29 of this act provides that — 
r The terms "person" and "owner" and any other' word or term 
used to designate the applicant or other entitled to a benefit or. 
privilege or rendered liable under the provisions of this act, in- 
clude a firm, corporation, or association as well as a natural 
person. 

' There is no more authority either in reason or in the 
terms of the law for accepting the notice of opposition 
and oath cf an attorney for a corporation than for accept- 
ing a corresponding notice and oath for an individual. 
The Examiner was right in dismissing the opposition. 
" The appellant here alleges in his appeal that the appli- 
cant's trade-mark should have been published a second 
time, because of an amendment to the application after 
the first publication. The amendment restricted the field 
covered by the application by eliminating some of the 
goods upon which the mark is used. Since the original 
publication included all of the goods now claimed and, in 
addition, others which have been abandoned, there appears 
to be no necessity for republication. The original publi- 
cation was notice of the applicant's present claim of owner- 
ship, and any one desiring to oppose its claim has had ample 
opportunity to do so. Republication would simply afford 
a second opportunity without apparent necessity. 
The decision of the Examiner of Interferences is affirmed. 




IS 



COJOHSSIONEK'S UEOISIOHS. 




P^- 



** 



The Ullman Einstein Compan? v. C. H. Giuves & 
Soxs.| | c 

Decided March If, 1906. 'f 

Trade-Marks— Interference— Motion to Dissolve— Inter- 
ference in Fact— Consent of^Parties. 
Where the trade-marks in interference include the words 
"Walnut Hill" and "Walnut Creek," respectively, but are en- 
tirely different in appearance, and the parties to the proceeding 
join in the request for dissoU-tion, Held that doubts, if any exist, 
should be resolved in favor ofitheir contentions, a „, ^^ 

g Appeal on notion. 

@ S TRADE-MARK FOR WHISKY. 1 NS g?3 fig 

WMr. Arthur E. WaMace for The Ullman Einstein Com- 
pany. ' * :*&&&*%&& 

Mr. Henri) W. Williams and Mr. Henry H. Bates for 
.C. H. Graves & Sons. - ^ ^ 

Allen, Commissioner: 

This is an appeal by C. H. Graves & Sons from the deci- 
sion of the Examiner of Trade-Marks refusing to dissolve 
the above-entitled interference. *| 

A motion for dissolution was made by The Ullman Ein- 
stein Company on the ground that there was no interfer- 
ence in fact, and it thus appears that both parties wish the 
interference dissolved. 

The mark disclosed by C. H. Graves & Sons includes the 
words "Walnut Hill" and that disclosed by The Ullman 
Einstein Company includes the words "Walnut Creek." 
Each mark, however, includes other tilings, and the two 
marks are entirely diUcrcnt in appearance. The word 
"Walnut" is therefore the only thing in common, and it is 
not believed that it is sufficient to warrant the holding 
that ! here would be confusion between the marks. Other 
words and features added to the word "Walnut" clearly 
distinguish tho marks, and since the parties to this pre- 
ceding join in the request for dissolution it is believed 
that doubts, if any exist, should be resolved in favor of 
their contention. i 

The decision of the Examiner of Trade-Marks is reversed. 



/X/^-v/^/ 



COMMISSIONER'S DEOISIQM 



Ex paste The Chapot-Shielaw Company. 1 ] 

Decided March U, 1906. 

1. trade-Marks— Examiner's Ruling a Judicial Decision 

Subject to Appeal. • 

The action of the Examiner of Trade-Marks holding that an ' 
application filed prior to the passage of the act of February 26, 
1905, was not a pending case and refusing to permit an amend- 
ment to the application to bring it under the provisions of the 
act was a judicial decision subject to review on appeal. 

2, Same— Return of Fee. 

'Vhere the applicant accepted the decision of the Examiner 
without appeal and filed a new application, Held he is not en- 
titled to the return of the filing fee on said application, notwith- 
standing the decision in ex parte Griserin-W erke Paul Camp- 
hausen G. M. B. J?.,' (120 0. G., 327.) ^ 

On petition. 

, trade-mark for chamois-skins and articles made therefrom , 

Mr. Vernon E. Hodges for the applicant.. 
Allen, Commissioner: 

This is a petition for the return of the fee of ten dollars 
paid upon the filing of the above-entitled application. 

It appears that tho petitioner filed an application for 
the registration of a trade-mark prior to the passage of the 
act of February 20, 1905, and that after the passage of the 
act the Examiner of Trade-Marks refused to permit it to 
amend the case to bring it under the provisions of the act, 
because it was not a pending case. The petitioner there- 
upon filed the present application covering the same sub- 
ject-matter. It now calls attention to the decision in ex 
parte Qriserin-Werke Paul Camphausen 6. M. B. H. (120 
O. G., 327) and says that in view thereof the Examiner 
was wrong in rujjujg that the original application was not 
pending and subject to amendment to bring it under the 
provisions of the new law. It is upon the ground of this 
alleged misinformation on the part of the Examiner that 
the petitioner now asks for the return of the fee paid in the 
present case; 

The Examiner's ruling was a judicial decision subject to 
review upon appeal, and since the applicant accepted his 
decision without appeal it is not entitled to the return of 
the fee in the present case because of the alleged misin- 
formation. It necessarily exercised its judgment in de- 
termining whether it would appeal from the ruling or file 
a new application. Having determined to file a new ap- 
plication, the payment of the fee was required by law. 

The petition, is denied. 




COMMISSIONER'S DECISIONS.] 

ROSENZWEIG w. Forbes. 




Decided March 19, 1906. 
4. Trade-Marks— Effect of Prioe Registration of Labejl 
Including the Teade-Maek. 
Copyrights and trade-marks are separate and distinct rights, 
and the trade-mark is not the mere name of the copyright pic- 
.ture, hut is the symbol by which the goods are known. Held, 
therefore, that ;the registration of a label embodying a trade- 
mark will not operate to prevent the registration of such 
trade-mark for particular goods. 

ade-Marks— Discrepancy in Statement of Date or 
Adoption in Application and in Testimony. 
Where a party alleges in his application an adoption of his 
mark in 1899 and in hi? ^stimony claims adoption late in 1S94 or 
early in 1S95, Held that the discrepancy is suspicious and calls 
for a close scrutiny of the testimony on his behalf seeking ^tip 
prove the earlier date. j[|j 
Appeal on motion. 

thade-maek foe whisky. 
Mr. Arthur E. Wallace for Rosenzweig. 
Mr. Charles E. Riordon for Forbes. 
Allen, Commissioner: 

This is an appeal by Rosenzweig from the decision of the 

Examiner of Interferences adjudging Forbes to have been 

the first to adopt tnd use the trade-mark in controversy. 

The issue is as follows: 

The words " O'd .Rose," or the words "Jack Rose," for whisky. 

Rosenzweig's mark consists of the words "Old Rose," 
,and that of Forbes consists of the words "Jack Rose." 
The appellant raises the preliminary question whether 
there is an actual conflict of rights due to the use of these 
marks and asks that the interference be dissolved .upon the 
ground that there is no interference in fact. 

It does not appear that any motion for dissolution was 
-made by Rosenzweig, and it is too late now to raise the 
.question for the first time. The Examiner having found 
that a conflict exists and that finding having been ac- 
quiesced in by the parties and by the Examiner of Inter- 
ferences, it should not be disturbed except upon the con-? 
elusion that it was obviously erroneous. There was no ob^ 
vious error here; but, on the contrary, it is believed that 
the Examiner's ruling was right. 

The appellant further urges that registration should sot 
be granted Forbes because he has registered under the copy, 
right laws a label embodying his present trade-mark. It 
is urged that to register the trade-mark now would be to 
.extend the monopoly secured by the copyright registration 
and that such extension would be contrary to the intent of 
the law. The appellant seems to suppose that the same 
principle is involved as that underlying the decisions of the 
.courts, to the effect that the name given to a patented artii 
cle is public property after the expiration of the patent. I 
cannot agree that the principle applies. Copyrights and 
trade-marks are separate and distinct rights, and the trade- 
mark is not the mere name of the conyrighted picture. It 
is the symbol by which the goods are known. Others may 
make the picture and call it what they please after the ex- 
piration of the copyright and may adopt it as a trade- 
mark for goode. The registrant has an equal right with 
others in f at respect. If, as hero, he adopts it as a trade- 
mark for particular go ids, others may not adopt and use it 
for the same goods unless they were first in. the field. 

Even if it should bo found that Forbes is not entitled to 
registrar ion, for the reasons aboTO£tatcd,it is not apparent 
what Le^ iwoul ' esult ioRfc anzweig. Judgment could 
be rendered ii l favor of Ro; nz iroig only upon the finding ■ 
that he we.s the first to adopt and use the mark. 

Considering the question of priority, it clearly and satis- 
factory appears thai Forbes adopted a::d used the mark 
as early as the spring of 1G0-5. Pi : senzrroig alleged in his 
application adoption in 1899, but hi his testimony cle.ims 
adoption late in 1S94 of early in 1895. This discrepancy 
is suspicious and'calls for a close scrutiny of the testimony 
oa his behalf s : eMng to prove the earlier c'ate. There is no 
testimony by any witness and no corroborating circum- 
stance tending to support his claim. The earliest corrob- 
orated date is in the summer of 1896, which is long after 
the adoption and use by Forbes. 

^The Fxe.mincr was right in adjudging that Forbes was 
e fi, si to adopt and use the mark, and therefore his de- 
ion is affirmed. 



er 




COMMISSIONER'S DECISIONS,^ 

/*? 

Leveeing Gcei-be Company v. The Union Pacific Tea 
Company. ^$_ m*t~ .w*jm' 

Decided March 14, 1908. 1 
INTERFERENCE— FAILURE TO PRINT TESTIMONY— JUDGMENT. 
Where no motion to dispense with the printing of the testi- 
mony in interference proceedings was made and no excuse for 
failure to print was offered by the junior party, Held that judg- 
ment was properly entered in favor of theisenlor party. 
. Appeal from Examiner of Interferences. 

I TRADE-MARK FOR COFFEE, j ^ ' & 

WLevering Coffee Company prose. <t0W^WMWl -'• ) 
1 Messrs. Mum & Co. for The Union Pacific Tea Com- 
pany. $ '«*) i <gjj 

Allen, Commissioner: 1*1 ^ 

This is an appeal by the Levering Coffee Company from 
the decision of the Examiner of Interferences adjudging 
; The Union Pacific Tea Company to have been the first to 
.adopt and use the trade-mark in issue. 

It is said that both parties took testimony, and it ap- 
pears that The Union Pacific Tea Company printed that 
,taken in its behalf. The Levering Coffee Companyifailed 
to print its testimony, and it was because of that failure to 
print that judgment was entered against a it>ndiri favor of 
,the senior party to the proceedings. ggj 

In the present appeal it is said: ""^ 

Our side of the case seems to have been determined adversely 
upon the fact that we failed to print our testimony. We have no 
knowledge of the fact that our opponents printed theirs, as we 
.are not in possession of a copy of the same, and we do not think 
that our failure to comply with this rule, which does not seem to 
.have been made compulsory by the act of February 20th, 1905, 
.■should act as a bar against us. j 

The act of February~20 says nothing {as to'printing tes- 
timony, but leaves that matter to be controlled by the rules 
of procedure established under section 26 of]the act. Rule 
44 says that — 

* * * Proceedings on sucji interference will follow, as nearly as 
practicable, the practice in interferences between arjplications for 
patents. *^ 

It is the uniform rule that testimony in interferences 
will not be considered unless printed, except in those cases 
where for good cause shown printing is dispensed with and 
Bix type-written copies are accepted instead. In the pres- 
ent case no motion to dispense with printing was made and 
no excuse for the failure to print was offered. It is clear 
that this Office can enforce the rule in regard to printing 
•only by refusing to consider testimony which is not printed* 
The Union Pacific Tea Company having been the first to 
file application for registration is prima facie the owner of 
the mark, and therefore the judgment of the Examiner 
Of Interferences in its favor is affirmed. 



£/£ 




r isy 




Z 



Ex parte AMERICA! CIRCULAR LOOM CCMPAHY. 
MS.D. Vol. 84, p. 460. 

On appeal from the action of the examiner in refusing to 
register the words "Circular Loom" as a trade-mark for "conduits 
and coverings for electrical conductors", upon the ground that 
the same are descriptive of the character of the loom on which 
the conduits or coverings are woven, the Commissioner Held that 
"The action of the examiner of trade-marks is affirmed". 

(Signed) F.I. Allen, 

Conimissioner . 



April 10, 1906 . 






/-%/ <*~fy. &•? 



Ex PARTE RUPPERT. 

Decided March 1/,, inos. 
I 1. Print— Title Given Not on Feint. 

Where the title given to a print does not appear on it, Held 
that registration was properly refused. 

2. svme— Same— Curing Objection. 

Where objection is made that the title does not appear upon 
the print, Held that the objection may be cured by filing copies 
having the proper title printed thereon or by changing the title 
to that which appears upon the present copies. 

3. Same— Indication of Merchandise. 

Held that a print for malt liquors which includes as an essen- 
tial feature a representation of a beer-keg is a sufficient indica- 
tion of the merchandise for which it was designed. 

On petition. 

print for malt liquors, including beer and ale. 
Mr. J. L. Atkins for the applicant. 
j Allen, Commissioner: 

This is a petition from the decision of the Primary Ex- 
i aminer refusing to register a print for malt liquors en- 
titled "The Ruppert Eagle." 

The title given to the print does not appear on it, as re- 
quired in the rules of practice, and this constitutes one of 
the grounds for refusing registration. Additional ground 
for refusal stated by the Examiner is that the print does 
not describe or indicate the merchandise for which it was 
designed. 

No. 7.] 





^An. examination of the print shows that it includes as an 
essential feature a representation of a beer-keg, and it is 
believed that this is a sufficient indication of the merchan- 
dise. The objection that the label is not descriptive- 
should not be insisted upon. 

The objection that the title does not appear upon the 
label is well founded and under the express provisions of 
the rules must be insisted upon. This objection may be 
cured by filing copies having the proper title printed there- 
on or by changing the title to that which appears upon the 
present copies. 

The decision of the Examiner refusing registration is 

affirmed. 



!Ml 



/7-^.^y- <3c 



DECISIONS OP THE TJ. S. OOUETS. 







Court of Appeals of the District of Columbia. 

In re Carx, Belt & Company. '■■■" 

Decided March :, 19MS. 

1. TnADr-TlAHEs— S bai of State Xot Registrable— Act Feb- 

HUASV 20, 190.5, CONSTRUED. 

A trade-mark It r whisky consisting of a pictorial representa- 
tion of the arras and seal of i he State of Maryland, with certain 
additions or variations, i t not aititled to registration under the 
last proviso of the filth eel i »n of the Srade-Mark Act of Febru- 
ary 20, L905, (33 Stat. L.,731,ch.5i !,)asit standi testhearmsand 
seal of the State of Mari land and violates the express provision 
of such section which prohibits the registration of any mark 
which "consists of or comprises the flag or coat-of-arms or other 
insignia of the United Stales or any simulation thereof or of any 
State.'' 

2. Same— Act Refers to Marks Which are Not Technical 
Trade-Makks. 

The last proviso of section 5 of the Trade-Mark Act of Febru- 
ary 20, 1905, relating to the registration of marks which had 
bien in actual and exclusive use for ten years, was intended to 
provide for the registration and protection of marks which were 
not technical trade-marks, but which had been actually used as'' 
trade-marks by the applicants or their predecessors from whom 
they derived title and in which the user had acquired property 
rights for more than ten years next preceding the passage ol 
the act. 

3. Same— Use of Real of a State Cannot Be Exclusive. 
A mark which simulates the arms or seal of the State of Mary- 
land is not registrable under the last proviso of the fifth section 
of the Trade-Mark Act of February 20, 190.5, providing for the 
registration of marks which had been in actual and exclusive 
use by the applicants for ten years next preceding the passage 
of the act, as the use was not exclusive. Applicants could never 
acquire such a property right in the seal or the coat-of-arms of 
the State of Maryland as to exclude the State from the use there- 
of. (Gilman v. Hunnewell, 122 Mass., 147; Commonwealth v 
Sherman Mfp. Company, "5 N. E., 71.) 

i. Same-Use in Trade of Public Insignia Against Public 
Policy. 
Tha t the use of the coat-of-arms of the United States or of the 
flag or of armorial bearings and decorations for purposes qf 
trade is against pubhc policy or order has been recognized by 
the legislatures of various States in acts prohibiting their use, in 
the International Convention for the Protection of Industrial 
Property, concluded at Paris March 20, 1883, and by the Com- 
missioners of Patents in refusing registration to marks of this 
character, and it was in recognition of this public policy that 
Congress inserted the provision prohibiting the registration of 
such marks. 

McComas, J.: 

This is an appeal from the decision of the Commissioner 
of Patents affirming the decision of the Examiner of Trade- 
Marks refusing to register in the Patent Office an alleged 
trade-mark. 

_ The application of Cahn, Belt & Company for registra- 
tion was made under the act of February 20, 1905. This 
appeal was taken under section 9 of that act. 

This act of February 20, 1905, intended to authorize, the 

registration of trade-marks and to protect the same It 

went into effect April 1, 1905, and on that day the appel- 

lants, Cahn, Belt & Company, filed in the Patent Office an 

application for the registration of the mark used upon 

whisky, the mark being thus described in the application- 

Ma X r?l'amr;!irh P , n 'T ,l,!1,i ?V. of the " rms anr| «™ 1 <" the State of 

' III' ..;.", „ Sons, as follows? The 

f^orri J ft Vr^?«r«^ e /. a ^ epr f sent % tionln «>^ black of a tre- 

r"!i?r.'.! fnf, ,v_ eflf '?! the device termed a "club" need upon play ' 



or 1 m !, l '::..„ .- 1 ?: l Co - Within and close to a cir- 






This mark was refused registration because the Commis- 
sioner of Patents held that it simulates the arms and seaj 
of the State, of Maryland and violates the express prohibi- 
tion in section 5 of the act before mentioned, and also the 
provisions of the International Convention for the Protec* 
tion of Industrial Property of March 20, 1883, Article VI, 
and is contrary to public policy as frequently declared in a 
series of decisions of the Commissioner of Patents refusing 
registration of trade-marks to public insignia. 

This application admits that the mark is "»a pictorial 
representation of the arms and seal of the State of Mary- 
land with certain additions or variations." The Commis- 
sioner of Patents decided that the mark was for this reason 
properly refused registration by the Examiner of Trade- 
Marks because such marks belong to one of the classes for- 
bidden by section 5, of the act of February 20, 1905, which 
is as follows: 

Sec. 5. That no mark by which the goods of the owner of the 
mark may be distinguished from other goods of the same class 
shall be refused registration as a trade-raark on account of the 
nature of such mark unless such mark — 

(a) Consists of or comprises immoral or scandalous matter; 

(6) Consists of or comprises the Hag or coat-of-arms or other in- 
signia of the United States, or any simulation thereof, or of any 
State or municipality, or of any foreign nation: Provided, That 
trade-marks which are identical with a rcgisterei or known trade- 
mark owned and in use by another, and appropriated to merchan- 
dise of the same descriptive properties, or winch so nearly resem- 
ble a registered or known trade-mark owned and in use by another, 
and appropriated to merchandise of tiie same descriptive proper- 
ties, as to be likely to cause confusion or mistake in the mind of 
the public, or to deceive purchasers, shall not bo registered: Pro- 
vided, That no mark, which consists merely in the name of an indi- 
vidual, firm, corporation, or association, not written, printed, 
impressed, or woven in some particular or distinctive manner or 
in association with a portrait of the individual, or merely in words 
cr devices which are descriptive of the goods with which they are 
used, or of the character or quality of such goods, or merely a geo- 
graphical name or term, shall be registered under the terms of this 
act: Provided further, That no portrait of a living individual may 
be registered as a trade-mark, except by the consent of such indi- 
vidual, evidenced by an instrument in writing: A nd provided fur- 
ther, That nothing herein shall prevent the registration of any 
in irk used by the applicant or his predecessors, or by those from 
whom title to the mark is derived, in commerce with foreign na- 
tions or among the several States, or with Indian tribes, "which 
was in actual and exclusive use as a trade-mark of the applicant 
or his predecessors from whom be derived title for ten years next 
preceding the passage of this act. 

This section says that no mark shall be refused registra- 
tion as a trade-mark upon account of the nature of the 
mark unless it — 

(a) Consists of or comprises immoral or scandalous matter; 

(6) Consists of or comprises the flag or coat-of-arms or other 
insignia of the United States, or anv simulation thereof, or of any 
State. , 



L 



/^ 



2 A 



•The section declares that.no mark shall be refused regis* 
-tration as a trade-mark on.accourit of its nature unless by 
its nature it .is immoral or scandalous, or is the coatrof- 
arms of the United States or of a State, or some simulation 
thereof. 

While this act provided generally for the registration of 
trade-marks, the fifth section expressly prohibited the 
registration as trade-marks of immoral or scandalous mat- 
ter and public insignia. The last proviso of this section 
which was in the bill when it passed the House of Repre- 
sentatives, was amended in the Senate by twice substi- 
tuting the word "mark" for the word "trade-mark" and 
in inserting in lieu of "and lawful" the word "exclusive:" 
It is clear to us that these changes were made for the pur- 
pose of permitting the registration of marks which were 
not trade-marks but which had been J actually used as 
trade-marks by the applicants or their predecessors, from 
whom they derived title, and in which the user had ac- 
quired property rights for more than ten ye^rsnext pre- 
ceding the passage of the act. 

The last proviso of section 5, as amended and passed, 
was not intended ,to provide for the registration of tech- 
nical trade-marks, for such marks had been cared for else- 
where in this act. This proviso permittee! the registration 
of marks, not in either of the classes prohibited by this sec- 
tion, if such marks were in actual; and exclusive use as a 
trade-mark for ten years next preceding the passage of the 
act. In respect of technical trade-marks, this proviso was. 
absolutely useless. It was intended to save the right of 
registration to the marks described in the proviso. 

The section had prohibited the registration of immoral 
or scandalous matter and public insignia as trade-marks, 
no matter how long the same had been before registered, 
and the proviso only extended the right of registration to 
marks not within either of the prohibited classes, if such 
marks had been in actual and exclusive use as a trade- 
mark during the ten years next preceding the passage of 
the act. 

The ten-year proviso in no wise relates to the applicants' 
trade-mark for whisky, for the proviso relates only to 
marks which are not technical trade-marks. Among such 
marks, the two classes prohibited by the section were not 
saved by the proviso, and only such marks not prohibited 
by the section as were in actual and exclusive use for ten 
years as a trade-mark were to be admitted to registration. 
The act permitted the registration of all trade-marks not 
within the prohibited classes. It is plain this proviso in 
extending to marks not technical trade-marks the right to 
registration, intended to confine the marks permitted regis- 
tration to such as would be legitimate trade-marks under 
this section. The fifth section, taken in its entirety, which 
prohibited the registration of technical trade-marks when 
such were scandalous or immoral or simulations of public 
insignia, did not at the same time permit marks in actual 
and exclusive use for ten years to be registered as trade- 
marks if such marks were either scandalous or immoral or 
simulations of public insignia. To permit under this pro- 
viso to the section the registration of a scandalous mark 
and to prohibit under the section the registration of a 
technical trade-mark which was scandalous, would be ab- 
surd. The proviso which was meant to be a saving clause 
for certain marks cannot be construed to make the marks 
thus saved a preferential class of marks to which the two 
prohibitions of the section do not apply. 

The applicants' mark would not be a mark within the 
meaning of this last proviso to section 5, because it wa s 
not in actual and exclusive use as a trade-mark for ten years 
next, preceding the passage of this act. 




The application in this case admits that the mark we 
are now considering is a simulation of the arms or seal of 
the State of Maryland, with variations it is true, but still 
a simulation of the coat-of-arms of Maryland. The coat- 
of-arms of Maryland was never in the exclusive use of the 
applicants during any period, nor could the applicants 
ever acquire an exclusive use as a trade-mark of the State 
coat-of-arms. In the sense of this proviso, the applicants 
had the actual but never had the exclusive use of this simu- 
lation of the Maryland coat-of-arms, and for this reason 
the appellants' trade-mark sought to be registered does 
not come within the last proviso of the fifth section. The 
•appellants never could acquire such property right in the 
•coat-of-arms of Maryland, or any simulation thereof, 
Against the State of Maryland. 

In the leading case of Gilman v. Hmnewell (122 Mass., 147) 
Chief Justice Gray said: "A irade-marK may consist of a name, or 
a device, or a peculiar arrangement of words, lines or figures m 
the form of a label, which has Been adopted and used by a person m 
his business to designate goods of a particular kind manufactured 
by him, and which no other person has an equal right to use. 
This may be protected by injunction. Can it for a moment be 
said that the Commonwealth cannot use its own device, or that 
the defendant can obtain an injunction against the Common- 
wealth for so doing? 

As against the Commonwealth the. defendant cannot have any 
■claim to a trade-mark. Could any one suppose that this court 
would allow its seal to be used as a trade-mark ? And if a court s 
seal cannot be used, cannot the. great and general court forbid tne 
use of the great seal and the arms of the Commonwealth ' for any 
advertising or commercial purpose?" It seems to us too clear for 
argument. {Commonwealth v. Sherman Mfg. Co., Supreme 
.Court of Mass.; 75 Northeastern Reporter, 71.) 

The Commissioners of Patents in recent years have 
steadily held that the registration of the coat-of-arms of the 
United States or of any State should be refused registra- 
tion as being against public policy. {Ex parte Schmach- 
tenburg Bros., 51 MS. Dec, 204; New Prague Flouring MM 
.Co., 62 MS. Dec, 437.) 

Commissioner Duell, now associate justice of this court, 
.refused to register similar marks in ex parte Penny, (67 MS. 
Dec, 38;) The Celluloid Company, (67 MS. Dec, 136;) ex 
parte Standard Fashion Co., (89 O. G., 189;) ex parte Ball, 
,(98 O. G., 2366.) . ** 

In ex parte BrandsvMe Fruit Farm Company (103 
<0. G., 660) registration was refused of the United States 
seal for the reason "that the use of such emblems is 
against public policy and is not to be encoura-ei." In 
refusing registration to the .appellants' mark, •Commis- 
tfoner Allen s*ys: , __„ mt^.—.— 







3 A 



The public policy referred to has been recognized by the legisla- 
tures of various States and by reason thereof statutes have been 
passed prohibiting the use of the nag for purposes of trade. This 
polity and the reasons underlying it were Recognized by the Inter- 
national Convention for the Protection of Industrial Property 
concluded at Paris, March 20, 1SS3, since in article (> it was said: 
"The deposit may be refused, if the object, for which it is asked, 
is considered contrary to morals and to public order," and in the 
final protocol, it was said: 

" In order to avoid all misinterpretation, it is understood that 
the use of public- armorial bearings and decorations may be con- 
sidered contrary to public order in the sense of final paragraph of 
article 6." 

It was in recognition of this public policy and not as establish- 
ing it, that Congress inserted the provision in section ."> of the act of 
February 2tt. lt*0"», prohibiting the registration of any mark which 
' ' consist's of or comprises the flag or coa t-of-arms or other insignia 
of the United States or any simulation thereof or of any Stale °t 
municipality or of any foreign nation." 

In 5 Wallace, 462, 469, Chief Justice Chase, speaking 

for the Court said: 

This Court can know nothing of public policy except from the 
Constitution and the laws and the course of administration de- 
cisions. * * * Considerations of that sort must in general be 
addressed to the legislature. Questions of policy determined 
there are considered here. 

For the reasons well stated by Commissioner Allen, Con- 
gress has determined by the very section of the act we arc 
now considering to enforce a wise public policy by pro- 
hibiting the registration of the coat-of-arms of a State as a 
trade-mark. 

The United States has united in an international con- 
vention with nearly all other nations in refusing to include 
public arms as trade-marks. Had the act we are now con- 
sidering been silent on this subject, the international con- 
vention to which the United States had long been a party 
would have suggested the acquiescence, of Congress in the 
refusal to register coats-of-arms of a State, but since in this 
general statute for registration of trade-marks Congress 
has expressly declared that registration shall be refused to 
trade-marks consisting of scandalous or immoral matter, or 
coats-of-arms of a State, or any simulation thereof, it is im- 
possible to hold that the last proviso to section 5 in tins act 
was intended to except one class of marks only from the 
unequivocal declaration of Congress against the registra- 
tion of such trade-marks. 

The decision of the Commissioner of Patents in this case 
must be affirmed. 

It is not necessary to discuss the appellants' citation of 
rules for the construction of provisos in statutes. It is im- 
possible to read the act of February 20, 1905, and escape 
conviction that Congress intended to prohibit the registra - 
tii m of the trade-mark which the appellants ask. 

The intent is the vital part. the. essence of the law, and the pri- 
mary rule of construction is to ascertain and give effect to that 
!?;."'.• i. ■ lntl> ntion of the legislature in enacting a law is the 
1; ' ■'' "-'"-and must be enforced when ascertained, although it 
may not ^consistent with the strict letter of the statute. Courts 
Jhi t™»£i 0W . th0 .i lctter oi a stat ute when it leads away from 
„ h ', r i "', e !l ana i P ur P° 8e , 01 «'» legislature and to conclusions 
SESfi f n T- al P ur P° se olE the act." {Lewis' Sun- 
aertantl Statutory Construction, sec. mi.) 

In our opinion the intent of this statute upon this point 
is so clearly expressed that it needs no argument. 

The act of February 20, 1905, was intended to provide 
for the registration of marks already owned by traders. 
'Ihe last proviso to section 5 was intended to refer only to 
marks owned by the applicants and in their actual and 
exclusive use for ten years. A party having a technical 
trade-mark must apply for registration under the provi- 
sions of this act relating to technical trade-marks. This 
last proviso is a ten-year saving clause for another clas3 of 
marks. 



It is plain from this act that Congress did not intend that 
any of its provisions should warrant the registration of any 
trade-mark which is contrary to the terms of the Conven- 
tion for the Protection of Industrial Property to which the 
United States is a party. 

The case of Ruhstratt v. The People (185 111., 133) is not 
satisfactory reasoning. __It appears that a strong minority 
of that court were also dissatisfied with the argument of 
the majority in favor of making merchandise of the flag. 

The circumstance in this case and in several others 
urged upon us by the appellants, that Congress had been 
silent upon this subject, has lost force, since Congress in 
this act has expressly prohibited the registration as trade- 
marks of the coats-of-arms of the Nation and of the States. 
Other cases cited by the appellants need not be reviewed 
here since we hold that the act of Congress itself effec- 
tually forbids the registration of the simulation of the coat- 
of-arms of Maryland. 

The clerk of the court will certify this opinion and the 
proceedings of the court in this cause to the Commissioner 
of Patents according to law. Affirmed. ^ ,.,■,-,.> 



St 



Court of Appeals of the District of Columbia, 

Martin v. Martin and Bowne Company. 
Decided February 6, 1906. 

Tkade-Marks— Opposition— Verification of Notice— Sec- 
tion 6 Trade-Mark Act Construed. 
Section 6 of the Trade-Mark Act of February 20, 1905, provid- 
ingthat the affidavit in support of the notice of opposition shall 
be made by the person who would be damaged by the registra- 
tion, is not satisfied by the affidavit of the attorney or agent of 
such party. 

Same — Same— Failure to Oppose Does Not Deprive Owner 
of Property Right. 
Where the owner of a trade-mark is deprived of his right to 
oppose registration thereof by another by the enforcement of 
the letter of the statute, he is not thereby deprived of his right 
of property in the trade-mark. Aside from the usual remedies 
at law and in equity for the protection or recovery of property 
rights, he may possibly obtain a remedy through a declaration 
of interference under section 7 or by a cancellation under sec- 
tion 13. 

Mr. J. L. Levy for the appellant. 
Mr. Clifford E. Dunn ioi the appellee. 

JHEPARD, J.: 

This appeal has been prosecuted by William L. Martin 
rom the decision of the Commissioner of Patents quash- 
ng his opposition to the registration of a trade-mark ap- 
>lied for by Martin and Bowne Company. 

On April 7, 1905, Martin and Bowne Company filed an 
ipplication for the registration of the word "Marguerite" 
i trade-mark for tooth-brushes. 

This application conformed to the requirements of the 
Trade-Mark Act approved February 20, 1905, and the re- 
quired notice thereof was given. 

Within the time limited by the law, an opposition there- 
to was filed by William L. Martin, through his attorney 
Joseph L. Levy. The grounds of this motion were in sub- 
stance, that William L. Martin was an incorporator and 
president of the Martin and Bowne Company. That 
prior to the incorporation said William L. Martin had 
adopted and used the word "Marguerite" as a trade-marly 
for tooth and toilet brushes and had registered the same.\ 
That said Martin has not abandoned his exclusive owner- 
ship of the mark and is now the owner of the legal title 
thereto. That the said Martin and Bowne Company is ' 
not the owner of the trade-mark, and that a certificate of 
registration cannot legally be issued to it as against the 
said William L. Martin. 

This opposition was supported by the following affidavit : 

United States of America, 1 

City, County & State of New York, f 
Joseph L. Levy, being duly sworn deposes as follows: 
I am the attorney for the said William L. Martin, the opponent 
herein. The said William L. Martin is in Europe, and wilf not, I 
am informed return to the United States until the latter part of 
June 1905. That the above-recited allowed application for regis- 
tration by the Martin & Bowne Co. was published in the Offi- 
cial Gazette of the United States Patent Office, on the 16th day 
of May 1905. That the allegations made in paragraphs 1, 2, 3, & 4 
of the foregoing opposition are true to the best of his knowledge 
and belief, and as to those alleged on information and belief, T 
believe them to be true. That said information is derived from 
statements made to me by others who allege they have knowledge 
of the facts. That the absence from this country of the said Wil- 
liam L. Martin is the reason why I make this verification. 

The Martin and Bowne Company moved to quash this 
opposition, on the grounds: first, that the same had not 
been verified by the said Martin; second, that the attorney 
had no authority to file the same on behalf of William L. 
Martin ; and, third, that the grounds of the application are 
insufficient. 

The Examiner of Interferences sustained the motion to 
quash on the first and third grounds. 



On appeal, the Commissioner held that the application 
set forth sufficient grounds of opposition, but affirmed the 
decision because the opposition had not been verified by 
the party. 

Section 6 of the act contains the following provision: 

Any person who believes he would be damaged by the registra- 
tion of a trade-mark may oppose the same by filing notice of oppo- 
sition, stating the grounds therefor, in the Patent Office, within 
thirty days after the publication of the mark sought to be regis- 
tered, which said opposition shall be verified by the person filing the 
same before one of the officers mentioned in section 2 of this act. 

Construing this provision, the Commissioner said: 

It thus appears that the person making the opposition must be 
the one who would be damaged by registration, and that such per- 
son must sign and verify the notice of opposition. The general 
principle that what a party may do in person he may do by agent 
has no application here since the statute requires the personal 
oath of the party. The making of an oath to a statement of facts 
cannot be delegated. 

We agree with the Commissioner of Patents that where 
a statute requires an oath to be made by a party, as in this 
instance the one who may believe himself damaged, it is 
not satisfied by the affidavit of his attorney or agent. 

The intent of the law-makers is to be found in the plain 
language of their enactment. Considerations of incon- 
venience and hardship growing out of the brief period 
allowed for the opposition, or the absence of the damaged 
party, as was the case here, may well operate upon the 
makers of the law, but cannot justify a judicial addition 
to the letter of the statute. {Ohio Nat. Bank v. Berlin, 
33 W. L. K, 726, and cases cited.) 

The practice acts of the States which have come under 
our observation generally provide that a required oath, 
particularly in the case of ancillary proceedings and rem- 
edies, may be made by the party, his agent or attorney. 
Such as do not in terms authorize it to be made by the 
agent or attorney have generally, if not uniformly, been 
held to exclude them. (Huthsing v. Means, 36 Mo., 101, 
107; Levin v. Ditte, 17 Mo., 64, 69; Davis v. Monat Lumber 
Co., 2 Colo. App., 381, 387.) The following cases while not 
directly in point are governed by the same principle: 
Fernandez v. Miller, (26 La. Ann., 120;) Dodge v. New 
Union Packet Co., (13 Minn., 458;) Wheeler & W. M'f'g. 
Co.v. Lawson, (57 Wis., 400;) Clark v. Miller, (88 Ky., 108, 
112;) Bruffx. Stern, (81 N. C, 183, 190;) Weaver v. Roberts, 
(84 N. O, 493, 495.) In the two cases last named an an- 
cillary remedy in a pending action, obtained upon the oath 
of the attorney familiar with the facts, was upheld because 
the statute required that the facts authorizing the same 
"shall appear by affidavit," without naming any particu- 
lar person who should make it. In some instances, where 
the statute required an oath to be made by a party, it has 
been held that in case of a corporation the oath might be 
made by its duly-authorized agent who had personal knowl- 
edge of the facts. Of this nature is the single authority 
relied on by the appellant. (In re Cheguosett Lumber Co., 
112 Fed. Rep., 56, 58; see also Wheeler & W. M'f'g- Co. v. 
Lawson, S7 Wis., 400.) The reason on which these deci- 
sions rest is, that while the corporation, as the party to the 
proceeding, is entitled to the benefit of the statute it can 
only act by agent, and hence that the power to obtain the 
conferred benefit through the oath of its agent must be 
inferred. 

The conclusion seems to be a reasonable one, but the 
question is not involved in this case, and we express no 
opinion in respect of it. 

The right to oppose the registration of a trade-mark con- 
ferred by the section under consideration is a special one, 
and though deprived of its assertion by the enforcement of 
the letter of the statute, the appellant is not deprived of' 
his right of property in the trade-mark sought to be regis- 
tered by the appellee, if as a matter of fact and law he is the 
true owner. Aside from the usual remedies at law and in 
equity for the protection or recovery of property rights, he 
may possibly obtain a remedy through a declaration of in- 
terference under section 7, or by a preceeding for cancella- 
tion under section 13. 

However this may be, the decision appealed from was 
right, and must therefore be affirmed. It is so ordered, 
and the clerk will certify this decision to the Commissioner 
of Patents as the law requires. Affirmed. 



>^- 




/ &7* 





Conklin and Son v. The Albbbt Dickinson Company. 
Decided April 11, 1908. 

1. Tbade-Marks— Same Descriptive Properties. 

Timothy-seed and clover-seed aro goods oi the same descrip- 
tive properties, so that the use ol a mark by a party upon the 
former excludes the right of other parties to use the same mark 
upon the latter. 

2. Trade-Mark Interference— Priority— Identity of Ap- 

plicant. 
Whether the party named in an application for registration 
is the real owner of the rights represented by that application 
will not be considered in connection with priority, as the ques- 
tion is one for exparte determination by the Examiner of Trade- 
Ma rks after the question of priority has been finally settled. 

On priority. 

trade-mark for grass-seed. 
Messrs. Munn & Company for Conklin & Son. 
Mr. H. N. Low for The Albert Dickinson Company. 

Allen, Com missioner: 

This is an appeal from the decision of the Examiner of 
Interferences awarding to E. W.. Conklin & Son priority 
of adoption and use of the word "King" as a trade-mark 
for grass-seed. 

The Examiner of Interferences found from the evidence 
that E. W. Conklin & Son adopted the word "King" as a 
trade-mark for timothy-seed in the year 1899 and that 
they have used it continuously since that time. He also 
found that The Albert Dickinson Company has used the 
word "King" as a mark upon clover -seed and redtop- 
[Vol. 122. 



seed since the year 1901. His conclusion in favor of 
E. W. Conklin & Son was based on these findings. 

No error in these findings is alleged, and none is found; 
but it is contended by appellants that they do not support 
judgment of priority against them. This contention is 
based on the grounds, first, that the right of the appellees 
to use the mark upon timothy-seed does not exclude the 
right of others to use the same upon clover-seed, and, sec- 
ond, that there is no such firm as E. W. Conklin & Son, the 
real owner of the rights represented by the appellees' speci- 
fication being Horace E. Conklin personally. 

As to the first ground, the question is whether timothy- 
seed and clover-seed are goods of the same descriptive 
properties. I am of the opinion that they are. As to the 
second ground, the question is one for ex parte determina- 
tion by the Examiner of Trade-Marks after the question of 
priority has been finally determined. 

The decision of the Examiner of Interferences is affirmed. 




o^" 




r c^f <&--& 



/^£ 



NEW TRADE-MARK LAW. 

[Public— No. 146.1 

An Act to amend the laws of the United States relating to the 

registration of trade-marks. 
irf.vJ e ™ cted J>ll the Senate and House of Representatives of the 
United Stales o) 'America in Congress assembled, That section one 
of the Act entitled "An Act to authorize the registration of trade- 
marks used in commerce with foreign nations or among the several 
states or with Indian tribes, and to protect the same?' approved 
February twentieth, nineteen hundred and five, be, and is herebv 
amended by inserting after the words "description of the trade- 
S^L ' ♦,'' , e word f only when needed ^ express colors not 
as toUow? 1 aWlng sothattQ e section, as amended, shall read 
"That the owner of a trade-mark used in commerce with f oreisrn 
vfilS n . S '°J among ^e several States, or with Indian tribes, pro- 
tt£5 d , su e n »™er shall be domiciled within the territory of the 
™w ! k ates < or resldes ln or is Seated in any foreign country 
7. S by treaty convention, or law affords similar privileges 
^f/"™?l ,he Um , ted States . may obtain registration for 
such trade-mark by complying with the following requirements- 
£S& by S mg "5 Jhe p atent Office an application therefor, ui 
« nting, addressed to the Commissioner of Patents, signed by the 
applicant, specifying his name, domicile, location, and citizen- 
ship; the class of merchandise and the particular description of 
goods comprised in such class to which the trade-mark is appro- 
priated; a description of the trade-mark itself, only when needed 
'IZfSPf™ col ,?- r l , i8 t shown ta the drawing, and a statement of 
the. mode m which the same is applied and affixed to goods, and the 
iwfrf t f tune t d 'iS rl rf^ w ^ c 5 the tra de-mark has been used. With 
this statement shall be Med a drawing of the trade-mark, signed 
by the apphcant, or his attorney, and such number of specimens of 
the trade-mark as actually used as may be required by the Com- 
r3»°i n e I t °l Pa t™ts. Second, by paying into the Treasury of the 
United States the sum of ten dollars, and otherwise eomplyine 
with the requirements of this Act and such regulations as may be 
prescribed by the Commissioner of Patents." 
Sec. 2. That the Commissioner of Patents shall establish classes 
I "Serchandise for the purpose of trade-mark registration, and 
snail determine the particular descriptions of goods comprised in 
each class. On a single application for registration of a trade- 
mark the trade-mark may be registered at the option of the apph- 
cant for any or aU goods upon which the mark has actually been 
used comprised in a smgle class of merchandise, provided the par- 
ticular descriptions of goods be stated. p 

Sec. 3. That any owner of a trade-mark who shall have a manu- 
facturing establishment within the territory of the United States 
shall be accorded, so far as the registration and protection of 
trade-marks used on the products of such establishment are con- 
cerned, the same rights and privileges that are accorded to owners 
of trade-marks domiciled within the territory of the United States 
by the Act entitled "An Act to authorize the registration of 
trade-marks used in commerce with foreign nations or among the 
several States or with Indian tribes, and to protect the same " 
approved February twentieth, nineteen hundred and five 
dred°' d ^^ tUS AC * ShaU take efleCt July first ' nmete en hun- 
Approved, May 4, 1906. 

LVol. 122. 




TRADE MARKS. 

Classification of M erchandise. 
Geoup l.— raw materials. 

1. Animal. 

2. Mineral. 

3. Vegetable. 

Group 2.— MANUFACTURED MATERIALS. 

4. Abrasive and polishing materials not included in classes s", 
and 16. 

5. Adhesives. 

6. Chemicals not otherwise classified. 

7. Cordage not included in class 13. 

8. Detergents. 

9. Explosives. 

10. Fertilizers. 

11. Leather blackings and dressings. 

12. Masonry materials. 

13. Metal manufactures not otherwise classified. 

14. Metals, unwrought and partly wrought. 

15. Oils and greases not included in classes 6, 10, and 50. 

16. Paints and painters' materials. 

17. Wood manufactures not otherwise classified. 

Gboup 3.— TOOLS, MACIIINERY, AND VEHICLES. 

18. Agricultural and dairy machinery and parts of such ma- 
chinery. 

19. Boats and road-vehicles. 

20. Cutlery not included in class 61, and edge-tools. 

21. Electrical apparatus, machines, and supplies. 

22. Firearms, and equipments and projectiles not otherwise 
classified. 

23. Hand-tools not otherwise classified. 

24. Laundry appliances and machines. 

25. Locks and safes. 

26. Machinery and parts of machinery not otherwise classified. 

27. Railway equipment not otherwise classified, and railway 
rolling-stock. 

28. Sewing-machines and attachments. 

Group 4.— FURNITURE AND HOUSEHOLD ARTICLES. 

29. Brooms, brushes, and dusters. 

30. Crockery, earthenware, and porcelain. 

31. Filters and refrigerators. 

32. Furniture and upholstery not otherwise classified. 

33. Glassware not otherwise classified. 

34. Heating, lighting, and ventilating apparatus not included 
in class 21. 

Group 5.— LEATHER, PAPER, AND RUBBER GOODS. 

35. Belting, hose, and machinery-packing. 

36. Leather and leather manufactures not otherwise classified. 

37. Paper and paper manufactures not otherwise classified. 

38. Rubber and minor plastics not otherwise classified. 

Group 6.— DRY GOODS AND CLOTHING. 

39. Clothing not otherwise classified. 

40. Fancy goods, furnishings, and notions. 

41. Knitted, netted, and lace goods. 

42. Textiles not otherwise classified. 

43. Thread and yarn. 

Group 7.— FOODS. 

44. Bakery products, cereal foods, and yeast. 

45. Beverages, non-alcoholic. 

46. Coffee, tea, and substitutes. 

47. Confectionery. 

48. Dairy products. 

49. Distilled alcoholic liquors. 

- 50. Foods not otherwise classified. 

51. Malt liquors. 

52. Packing-house products. 

53. Saccharine foods not included in class 47. 

54. Sea foods. 

55. Wines. 

Group S.~ MISCELLANEOUS. 

56. Canes, parasols, and umbrellas. 

57. Dental machines, apparatus, and supplies. 

58. Games and toys, and sporting goods not otherwise classi- 
fied. 

59. Horologieal instruments. 

60. Inks and inking materials. 

61. Jewelry, and solid and plated precious-metal ware. 

62. Linoleum and oiled cloth. 

63. Measuring and scientific apparatus, appliances, and instru- 
ments. 

64. Medical and surgical apparatus, appliances, and instru- 
ments. 

65. Musical instruments and talking-machines and supplies 
therefor. 

66. Objects of art and ornament. 

67. Pharmaceutical preparations, plasters, and proprietary and 
veterinary medicines. 

68. Publications. 

69. Smokers' articles not included in class 71. 

70. Stationery not otherwise classified. 

71. Tobacco products. 

72. Merchandise not otherwise classified. 

NoTiCE.-*The classes of merchandise contained in the foregoing 
schedule are approved and will be given effect upon the first da J 
of July, 1906, according to the provisions of section 2 of the act on- 
titled "An Act to amend the laws n i' iln> United States rela! inu to 
the registration of trade-marks," approved May 4, 1U06. 

P.I. ALLEN, 
Commissioner. 

No. 4.] 








/ 



'?' 



<y. <**/./ f ?*/■ 



COMMISSIONER'S DECISIONS. ] \$^ 



-i 



[Ex parte Yodng'. 1 %WQ 

Decides April 10, im.MBM 1 83m33g m 

■ Trade-Mark— Anticipation.511 | - •» w . .". ..„., 

Refusal.™ registration is proper-whan the applicant's mart 
and the mark of the reference show in common a kSg w «" 1 
rated arm holding a glass of foaming beverage and efch h 
sprays of grain and hops and the marls d£££tSfl£S 
the k.ng ls .shown by the applicant at full length and momtrt 
upon a keg whereas in the registered,mark there is "IZZ e 

C surrounded by corta^senptions, and both marks E^S 

I On appeal. 1 WORK m ~ mm^mf^^g^ 

TRADE-MARK FOR BEER, ALE, AND PORTER. '^^J 

Mean. Mason, Fenwick'&Lawrence for;the;appeIlant.] 

Allen, Commissioner: - ■ ■ ■. !■■■■■ ,, 

This is an appeal fronTthe action- f; t heiExami„erof 
Trade-Marks refusing to register the>ark presented by 
the above-entitled application, i .,-,,, J 

The Examiner's action is based upon the ground of simi- 
larity between the mark shown by the applicant and that 
shown i m prior registrations No. 30,627, October 5 1897 

Si a "*°A November U ' m5 ' hoth h ? ^ jS 

Gund Bevving Company. The mark shown by the appli- 
cant and hat shown in the registrations cited are the same 
to the following extent: Each shows a king with elevated 
arm holding a g )ass f foaming beverage and each shows 
sprays of gram and hops. The marks differjrincipafly in 
that the king is shown by the applicant at full length and 
mounted upon a keg, whereas^n the registered mail- there 
is a bust figure surrounded by certain inscriptions. Both 
marks are applied to beer, i 

The striking characteristics are to such an extent the 
same in the two marks as to be likely to cause confusbn or 
mistake in the mind of the public or to deceive purchasers 
There was therefore no error in the refusal of regis ra&n 

The action of the Examiner of Trade-Marks is affirmed' 



pir. <r?-/ 7 



COMMISSIONER'S DECISIONS, 





S. Hiesch & Company v. Jensen v. H. J. Helleet & 
Sons v. Sample & Company. 

Decided April 10, 1906. , 

Trade-Mark Interference— Interference in Fact. 

The marks " Crystal Lake," " Crystal Bun," " Crystal Glen," 
and "Crystal Spring " |f or whisky are so similar as to leave no 
room for doubt that they are likely to deceive purchasers, and 
an interference including them should not be dissolved. 

On appeal. 

trade-mark for whisky. 

Messrs. Mason, Fenwick & Lawrence for S. Hirsch & 
Company. 

Mr. Arthur E. Wallace for Jensen. lLi < 

Mr. Arthur E. Wallace for H. J. Hellert & Sons. ™ "', 

Mr. Arthur E. Wallace for Sample &_Company. " \ ! 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to dissolve the interference. 

The issue consists of — 

The words "Crystal Lake," or "Crystal Run," or "Crystal 
Glen," or !' Crystal Spring, " for whisky. 

The marks are so similar as to be likely to cause confu- 
sion or mistake in the mind of the public or to deceive pur- 
chasers. It is urged that the interference should be dis- 
solved in spite of the similarity of the marks in view of the 
consent of the parties. The case of UUman Einstein Com- 
pany v. C. H. Craves & Sons (121 O. G., 1978) is cited as a 
precedent for such action. In that case the existence of 
interference in fact was regarded as doubtful, and it was in 
view of the doubt that the consent of the parties was per- 
mitted to turn the decision in favor of dissolution. I have 
no doubt as to the existence of interference in fact in the 
present case. The interference must accordingly continue. 
As stated in Wright & Taylor v. Bluthenthal & Bickart v. 
Mayer, Sons & Company v. Cushman & Company, (119 
O. G., 2234.) 

In determining the question of identity this Office must exercise 
its own judgment, and it will not dissolve an interference and reg- 
ister to two or more parties marks which it regards as substan- 
tially identical. 

The decision of the Examiner of Trade-Marks is affirmed. 



COMMISSIONS DECISIONS, 



/&&A 




Philadelphia Watch Case Company v. The Dueber 
Watch Case Mancfactubing Company v. The Key- 
stone Watch Case Company v. Byeon L. Steas- 
buegee & Company. 

Decided April 30, 1906. 1 

3. Trade-Mark— Interference in Fact— AJTnnvTTS. 

The words "Silveroid" and "Silverode" are so similar that 
an interference based thereon should continue, notwithstand- 
ing affidavits alleging that no confusion has resulted from the 
use of both marks. 
2. Trade-Mark Interference— Bar to Registration. 

Where applications for registration are involved in an inter- 
ference proceeding and a registration of the same mark by an^ 
other party is found which is prior in date to the dates of use 
alleged in the applications, constituting a 'prima facie bar 
against registration upon the aforesaid applications, Held that 
these applications should not be continued in the interference 
until the apparent bar has been overcome by such proof as may 
be made in the e» parte prosecution of the case. 

Appeal on motion. ■ •..■ 1 

WATCH-MOVEMENTS. 

Mr. George Cook for Philadelphia Watch Case Company. 

Messrs. Mason, FenwicJc & Lawrence for The Dueber 
Watch Case Manufacturing Company. ■ '" 

Mr. George Cook for The Keystone Watch Case Com- 
pany. 

Metm. Munn & Company for Strasburger & Company. 
Allen, Commissioner: ' 

This is an appeal by The Keystone Watch Case Com- 
pany from the action of the Examiner of Trade-Marks 
holding, first, that there is interference in fact between the. 
word "Silverine" and the words "Silverode" and "SiTver- 
oid," and, second, that registrations upon the application 
of The Keystone Watch Case Company and upon that of 
The Philadelphia Watch Case Company are barred by a- 
prior registration. '" x 

The similarity of the words "Silveroid " and "Silverode" 
to the word "Silverine " is as great to my mind as' that be- 
tween the words "Gold Du'st" and "Gold Drop," which" 
Were held to conflict by the circuitf'court of /appeals in tho' 
case of N. K. Fairbank Company v. Luckel, Ring & Cake'' 
Soap Company, (92 O. G., 1*437.) The refusal of the Ex- 
aminer to dissolve the' interference on the ground that 
there is no interference in fact was correct, notwithstanct-' 
ing affidavits which have been filed alleging that no confu- 
sion has resulted from the use of the marks referred to. " ' 



The prior registration found by the Examiner to bar 
registration upon the application of The Keystone Watch 
Case Company and upon that of The Philadelphia Watch 
Case Company is No. 11,647 to John C Dueber, dafed 
November 11, 1884, of the mark "Silverine" for corripO- 
sition watchcases. The date of use alleged in the applica- 
tion of The Keystone Watch Case Company is January, 
1886; that alleged by The Philadelphia Watch Case Com- 
pany is May, 1891. The goods mentioned by each of these 
applicants are of the same descriptive properties as those 
of the registrant Dueber. The conclusion of the Exam- 
iner that registration upon the application of The Key-- 
stone Watch Case Company and upon that of The Phila- 
delphia Watch Case Company is barred by the Dumber 
registration is correct. The Dueber registration is made 
by the trade-mark statutes prima facie evidence of adop- 
tion and use of the mark shown upon the date of the reg- 
istration and of continuous use since that time. Until 
this prima facie bar against registration upon the applica- 
tions of The Keystone Watch Case Company and The 
Philadelphia Watch Case Company has been overcome by 
such proof as may be made in the ex parte prosecution of 
their applications they are not entitled to participate in 
interference proceedings. The case of Stewart v.' Einstein 
v. SawhiU, (C. D, 1892, p. 209,) cited by appellant, is ir- 
relevant. No prior registration was presented there. ' The 
•question raised and decided pertained merely to the effect 
of an earlier application for registration, still pending, upon 
applications of others alleging dates of adoption and use 
subsequent to the filing date of the first-mentioned ap- 
plication. ' 

Appellant urges that the Examiner's decision was jn 
error because of insufficient evidence tp connect the title 
of The Dueber Watch Case Manufacturing Company with 
the Dueber registration. The Dueber Watch Case Manu- 
facturing Company has made a showing of use from a time 
prior to the date of the Dueber registration, which showing 
™ been accepted by the Examiner as sufficient to sustain 
registration. No reason is found for disturbing the Ex- 
aminer's conclusion in this regard. That the° showing 
made by The Dueber Watch Case Manufacturing Com- 
pany is merely ex parte in character is np reason for con- 
tinuing in the interference the appellant or others who, 
like it, have made no showing, ex parte or otherwise, which 
might entitle them to registration notwithstanding the 
Dueber registration. 
The decision of the Examiner of Trade-Marks is affirmed. 




Il?7 






y^ ^^ 



/ 



*-<?' 



COMMISSIONER'S DECISIONS. 




Ex parte American Circular Loom Comtany. 



Decided April IS, 1900. 

1. Trade-Marks— Character of Alleged Mark. 

An alleged mark for tubes which consists of flakes of mica ap- 
plied to the outside of the tube, so as to give it a mottled ap- 
pearance, is not proper subject-matter for registration as a 
trade-mark. 

2. Same— Same— Machines and Designs as Trade-Marks. 

The restrictions upon the general right to make, use, and sell 
which arc imposed by patents should not be extended by the 
recognition of machines or designs as trade-marks, 

3. Same— Same— Distinct from the Goods. 

Custom and reason require that a trade-mark shall have an 
existence so distinct from the goods to which it is applied that 
it will be readily recognized by the public and by purchasers as, 
an arbitrary symbol adopted to authenticate origin. 

On appeal. 

.trade-mark for insulating-tubes or tubular coverings for 
electric wires. 

Mr. Charles F. Perkins and Mr. Arthur W. Harrison for 
the applicants. 
Allen, Commissioner: 

This is an appeal from the action of the Examiner jrrf 
Trade-Marks refusing to register an alleged trade-mark. 

The alleged mark, according to the application, is used 
upon insulating-tubes or coverings for electric wires and 
consists of flakes of mica impressed or otherwise applied 
to the external surface of the article. The drawing shows 
merely a portion of a tube having a mottled appearance 
upon its outside surface.'] 

Registration was refused by the Examiner on the ground 
that— 




* * * the mark claimed is not a distinctive mark, indicative of 
origin and ownership, but a mere representation of the goods and 
as such not registrable as a technical trade-mark. 

I am of the opinion that the application and drawing <dis r 
close no proper subject-matter for registration as a trade- 
mark. The application of mica-flakes as shown and de- 
scribed produces a specific appearance of the article as a 
whole. The effect is one of design and cannot be right- 
fully appropriated as a trade-mark any more than can the 
distinctive functioning features of a machine. ■ The latter 
when new, useful, and involving invention are the legiti- 
mate subjects of mechanical patents. The former when 
new, ornamental, and the result of invention are subjects 
of design patents. In neither class should the restrictions 
upon the general right to make, use, and sell which are im- 
posed by patents be extended by the recognition of ma- 
chines or designs as trade-marks. 

Moreover, custom and reason require that a trade-mark 
shall have an existence so distinct from the goods to which 
it is applied that it will be readily recognized by the public 
and by purchasers as an arbitrary symbol adopted to au- 
thenticate origin. The surface effect which tho applicant 
calls his trade-mark is not so clearly distinct from the arti- 
cle upon which it appears as to be readily recognized as an 
arbitrary symbol for this purpose, and in |my opinion it 
would not bo so recognized by those not specially in- 
formed. 

The action of the Examiner of Trade-Marks is affirmed. 1 



C-\ 



/7o 




Ex parte MAGNE-SILICA CO 



MS.D. , Vol. 85, p. 199 



cOo 



Ser. No. 7,743, filed June 9, 1905 



^oOe 



On petition from the action of the examiner requiring that 
the drawing and specimens accord as to the display of the mark, 
the Commissioner held; 



"It is "believed that the mark shown in the 
drawing should agree as closely as practicable 
shown "by the specimens. Ex parte Listman Mill 
0. G., 340. It has "been held that portions of 
by the specimens may be omitted from the regis 
(In re Standard Underground Cable Company, Cou 
of the Distirct of Columbia, unpublished), but 
been held that the mark shown by the registrat 
might differ in other respects from that used, 
is perceived why it should be so held. 

"The netitio?a is denied." 



registration 
with the mark 
Company, 119 
the mark shown 
trati on drawing 
rt of Appeals 

it has not 
ion drawing 
and no reason 



(Signed) F.I. Allen, 

Commissioner 



May 23 , 19 06 . 




Ex parte DIAMOND CHAIN Aim MANUFACTURING CO.MPANY. 



MS.D., Vol. 85, p. 201 



cOo-- 



Ser. No. 8,97 5, filed June 24, 1905. 



>0o- 



On petition from the action of the examiner requiring that 
the drawing show merely the trade-mark and no more-, and in a 
case where the mark claimed consists of a conventional figure 
known as a diamond and the drawing showed the link on which 
the conventional figure appeared, the Commissioner held: 



"The drawing should be confined to. the mark 
"Petition denied." 



7.1. Allen, 

Commi s si oner . 



May 23, 1906. 




Ex garte THOMAS N; KEKYON, 
MS.D. Vol. 85, p. 271. 



S*a,.7u>-&</ £ 



On appeal from the action of the examiner in refusing to 
register the words "CATARRHAL JELLY" as a trade-mark for a 
medicinal preparation, upon the ground that the same is descrip- 
tive of the character of the preparation, the Commissioner held 
"that any one dealing in remedies for catarrhal troubles should 
not be prohibited from applying the word "catarrhal" thereto 
except under special circumstances not appearing in this case, 
and that if the remedy was in the nature of a jelly, such parties 
should be permitted to apply to their goods the term 'catarrhal 
jelly 1 as properly and naturally descriptive thereof". 

The decision of the examiner was affirmed. 



(Signed) 



E. I. Allen. 



Commissioner, 



June 15, 1906. 













i a 

DECISIONS OP THE U. S. COURTS, 

Court of Appeals of the District of Columbia.' 

U In he A. G. Spalding and Beos. S3 

Bedded A pril S, 1906. 781 

1. Trade-Mark Registration— Description of Goods. 

"Implements, apparatus, and goods used in athletic games 
and sports " Held indefinite and of no force as a statement of the 
particular description of the goods upon which the trade-mark 
had been used. 

2. Same— Ten-Year Proviso. 

When, registration is claimed under the ten-year proviso of the 
Trade-Mark Act, it should clearly appear in the application for 
such registration that every condition precedent has been fully 
complied with. 

3. Same— Same— Actual Use. 

The term actual use in the ten-year proviso of the Trade-Mark 
Act should be strictly construed. 
i. Same— Same— Same. 

When an applicant seeks a registration under the ten-year pro- 
viso, he should hot be permitted to register a word or name not 
recognized by the law as a lawful trade-mark for any articles of 
commerce save those upon which he has actually used the mark 
for the required period. 
5. Same— Actual Use. """ 

It is not to be presumed that in enacting a registration law. 
Congress intended to confer upon parties the right even to regis- 
ter marks, whether subject or not to lawful appropriation, in 
connection with articles upon which they had not been used. 

Mr. A. Pliireeley for the appellant. 

Mr. John M. Coit for the Commissioner of Patents. I 
Dveil,J.:' 

Tiiis is an appeal from the decision of the Commissioner - 

of Patents refusing appellant's application for trade-mark 

registration. The alleged mark consists of the name 

"Spalding." This is an ordinary family surname. That 

such a name is not subject to appropriation as a lawful 

trade-mark cannot be successfully questioned. Less than 

a year ago the Supreme Court of the United States, in : 

Howe Scale Co. v. Wyckoff, Seamans & Benedict, (198 

U. S., 118,) citing several of its prior decisions, said, at 

page 134: 

But it is well settled that a personal name cannot be exclusively' 
appropriated by any one as against others having a right to use it; 
and as the name "Remington" is an ordinary family surname, it ■■ 
was manifestly incapable of exclusive appropriation as a valid 
trade-mark, and its registration as such could not give it validity. 

The Trade -Mark Act approved February 20, 1905, 
under which registration is sought, recognizing the law ' 
applicable to the subject, forbids the registration as a 
trade-mark of the mere names of individuals, firms, cor- 
porations, or associations. There is, however, in the act 
a proviso — 

that nothing herein shall prevent the registration of any mark 
as I by the ;ipp!icant or his predecessors, or by those from whom 
title to the mark is derived, in commerce with foreign nations or 
among the several States, or with Indian tribes, which was in. 
actual and exclusive use as a trade-mark of the applicant, or his 
predecessors from whom he derived title, for ten years next pre- 
ceding the passage of this act. 

.Registration is claimed under this proviso. 

The question is not before us as to the power of Con- 
gress, in enacting a trade-mark law, to provide for the 
registration of marks which concededly are not trade- 
marks, upon the ground that such marks have been used 
for ten years next preceding the passage of such an act, 
or as to the effect of such registration, and we therefore 
do not express any opinion relative thereto. But when 
registration is claimed under such provision, it is manifest 
that it should clearly appear in the application for such a 
registration that every condition precedent has been fully 
complied with. 







It is provided that the mark must have been "in actual 
and exclusive use as a trade-mark * * * for ten. 
years next. preceding the passage of the act." The ques- 
tion as to what is meant by the term "exclusive use" 
is not now before us, "but the objection raised. td the reg- 
istration is broad enough to present the question as to 
what is meant by the term "actual use." We think that . 
that term should be strictly construed, and when an appli- 
cant seek^ a. registration under this so-called "ten-years" 
clause he should not be permitted to register a word or 
name, not recognized by the law as a lawful trade-mark, 
for any articles of commerce save those upon which he 
has actually used the mark for the required period. There 
being no power vested in Congress to declare what are, or 
what are not, lawful trade-marks, or to say that any al- 
leged marks can be appropriated without a prior use, it 
is not to be presumed that in enacting a registration law 
it intended to confer upon parties the right, even to regis- 
ter marks, whether subject or not to lawful appropriation, . 
in connection with articles upon which they had not been 
used. t^. 

The ground of rejection is that the application does not 
conform to the requirement of section 1 of the act, which 
provides that in order to obtain registration for a trade- 
mark the applicant shall state "the class of merchandise 
and the particular description of goods comprised in such 
class to which the trade-mark is appropriated." In other 
words, it is argued that the statement made by the appli- 
cant is too indefinite, in that it fails to disclose the par- i 
ticular description of goods comprised in the class to 
which the trade-mark is appropriated. The statement 
is as follows: 

The class of merchandise to which the trade-mark is appropri- 
ated is athletic supplies, and the particular description of the 
g Dods comprised in said class upon which said trade-ma rk is used 
is" implements, apparatus and goods used in athletic games and 
sports." 

It is difficult to conceive any more indefinite statement 
of a particular description of goods comprised in a class 
than the foregoing. "Implements, apparatus and goods 
used in athletic games and sports" embraces within its 
terms all the various articles used in every conceivable 
athletic game and sport. To enumerate -them would re- 
quire a greater knowledge of athletics than is possessed 
by the ordinary person. Many athletic games and sports 
have been invented or devised within the past ten years, as 
have also the implements and apparatus and goods used in 
connection with them. Manifestly, applicant has not used 
its mark for a period of ten years next preceding the pas- 
sage of the act in question, in connection witli such im- 
plements, apparatus and goods. This being so, applicant 
has no right to ask for a registration which in terms is 
broad enough to cover such implements, apparatus and 
goods used in such athletic games and sports, in connec- 
tion with which it has not used the mark for the required « 
time. _ 




2 a 



Under the circumstances, as presented by this case we, 
are in no position to pass upon the question other than as] 
above outlined. Applicant insists upon a statement 
which broadly, covers every conceivable implement and 
apparatus and all kinds of goods used in all sorts of ath- 
letic games and sports, in an application which it is, at 
the best, only permitted to make under a proviso as to the 
time of the use. The Commissioner of Patents has re- 
jected the application— and properly, we think— for the 
utter absence of any statement as to the particular de- 
scription of goods comprised in the class to which the 
alleged trade-mark is appropriated. 

Manifestly, there should be some system of classification; 
but the power to make such classification is not vested 
in this court and we cannot pass upon the question as to 
whether an applicant has stated the class of merchandise 
and. the particular description of goods comprised in the 
class to which he seeks to appropriate his trade-mark, 
except as each case comes before us. It is the duty of 
Congress to provide for such a classification in such man- 
ner as it may deem best. Counsel representing the Com- 
missioner of Patents and the applicant have called our 
attention to a bill now pending in Congress which amends 
the act of 1905 in this particular, and we are told that 
the bill, as amended, is likely to become a law. This is 
an added reason why we should not attempt to express 
any opinion upon the broad question sought to be raised 
in this case, but should rather simply pass, as we do, 
upon the specific question presented. Believing that the 
appellant has not in this case complied with the statute 
in specifying the particular goods upon which the mark 
has been used, as that requirement is construed in the 
light of the proviso of section 5, heretofore quoted, we 
must find that the decision of the Commissioner of Pat- 
ents in rejecting the application was correct, and we 
' therefore affirm his decision. 

The clerk of the court will certify this opinion and the 
proceedings of the court in the premises to the Commis- 
sioner of Patents, according to law. Affirmed. 



v ;*}/* & 





DECISIONS OP THE U. S. COTJETS. 



Court of Appeals of the District of Columbia. 
r In re Standard Underground Cable Company. 3 

Decided April 3, 1900. I ' 

1. TSADE-MAHK KEGISTRATION-DlVERGENCE BETWEEN DRAW- 

ING and Label. 
The Trade-Mark Act does not vest in the Commissioner of Pat- 
ent s the power to decide for the applicant tho scope of his claimed 
mark. 

2. Same— Same. 

Any rule of the Patent Office which would require the drawing 
filed to he a facsimile of the sample specimen furnished would bo 
invalid. 

3. Same— Same. 

Where the label used by the applicant has the word ' ! Eclipse!' 
J printed upon a dark background representing a partial solar 
eclipse, together with descriptive words and the name and ad- 
Iress of the applicant, and the application drawing shows merely 
: ord ' ' Eclipse," Held that registration of the mark shown 
•i rpon the drawing should not be refused on account of the orois- 
. sion from the drawing of the additional matter shown in connec- 
tion with that mark upon the label. 

Mr. Geo. E. Christy and Mr. Bayard. E.'Cristy for the 
;, appellant. I 

fclfr. John M. Coit for the Commissioner of Patents. ; 

Dueix, J.: 

This is an appeal from the decision of the Commissioner 

• of Patents refusing to register appellant's trademark, 
which is alleged to consist of the word "Eclipse," and 
which is used in connection with insulated wire. 

The ground upon which registration is refused is stated 

to be that the mark shown and described in the appficar 

tion is not the mark which the appellant. Ins used. 

The record discloses that the word "Eclipse,'.' as used 

i i y appellant, appears upon a label. It is stated in the 

• application for registration, that — 

the trade-mark is usually displayed by attachment to the coils or 
rolls of wire as prepared'for the market of a printed label bearing 
the said trade-mark. 

The record does not contain a sample of jthe label, but 
one is incorporated in appellant's brief, and no question 
is raised that the label is otherwise than as shown. This 
label has various descriptive words printed upon ,it, 
together with the name and address of appellant. The 
word "Eclipse" is printed upon a dark background rep- 
resenting a partial solar eclipse and underneath this dark 
background are the words, " Black Core." The drawing 
furnished as a part of the application shows only the word 
"Eclipse." 

The question is whether appellant by printing the word, 
"Eclipse" upon the label, with certain accessories must 
■ disclose in his application these accessorie s, or any part 
of them, and if the latter, which ones. 

When an applicant presents his alleged trade-mark for 
registry under the act approved February 20, 1905, who 
is to determine of what the mark consists? If, as in the 
present rase, the mark is impressed wp< ii a label, and, in 
addition to the matter claimed as the trade-mark by aft 
applicant, certain acc essories are shown, is the power 
vested in the Commissioner of Patents to say to applicant 
you must describe or show your mark not only as consist- 
ing of what you say it is, but also you must include such 
portion of the accessories, or parts of the label as I think 
are a material portion of the mark, although you may 
think otherwise! Tlie power is an autocratic one and its 
possession by the Commissioner of Patents cannot be 
presumed but must, we think, be set forth in the statute 
with reasonable clearness. We must bear in mind that 
the Trade-Mark Act of 1905 does not create trade-mark 
rights. It provides for their registry. The courts in tho 
end are to determine the cope of any trade-mark, regis- 
wr unregistered. If the holding of t he Commis- 



sioner of Patents as to what is an applicant's real trade- 
mark proves to be erroneous who suffers therefrom? 
: Surely not the Patent Office, or its officials. Rather the 
registrant, and those holding under him. As the burden 
is his, why should not the election be his? If he errs he 
pays the penalty. The general public is no more likely 
to be injured in the one case than in the other. An exami- 
nation of so much of the Trade-Mark Act of 1905 as is 
pertinent to the question under consideration discloses 
that the applicant is required to furnish, among other 
things, a drawing of the trade-mark. In addition he is 
obliged, if required by the Commissionei' of Patents, to 
furnish such a number of specimens of the trade-mark as 
vsctually used as may be called for. If none are called 
for he need furnish none. If none are required his trade- 
mark certificate will issue, and the validity of its registry 
cannot be invalidated for that reason. 
The act is silent as to the use to which the specimens 
i are to be put. The drawing is manifestly to be furnished 
- for photolithographic purposes. It may be that the 
-specimens may be required for the purpose of showing 
that the mark has actually been used, how affixed to the 
goods, and that the claimed mark actually appears upon 
the specimens furnished. It does not seem to us that it 
is to be presumed that the specimens are to be furnished in 
border that the Commissioner of Patents may pass upon the 
' question as to how much of the matter which appears upon 
the specimens constitutes the mark/ Nowhere in the act 
do we find any power vested in the Commissioner of Pat- 
ents to decide for the applicant the scope of his claimed 
trade-mark.'' The Commissioner is vested with power to 
determine, in the first instance, whether the mark as 
'described, shown and claimed, is subject to appropriation 
'•by the applicant and may satisfy himself as to whether 
'the trade-mark has been actually used in interstate or 
foreign commerce. When he iinds that the mark as 
claimed has so been used, it is not for him to turn to the 
specimen, if one be required by him, and, seeing other 
matter than the mark claimed, shown on the specimen, 
require applicant to add any such matter./ When he does 
this he goes beyond what, to us, seems to be the intent of 
the act. Any rule of the Patent Office which would re- 
quire the drawing filed to be a facsimile of the sample 
specimen furnished would, in our opinion, be. invalid. It 
is within common knowledge that a tradejnark is ordi- 
narily used upon a label, which contains embellishmen ts, 
ornamentations and other matter, which standing by 
themselves may often be proper subject-matter for exclu- 
sive appropriation as trade-marks, yet such matter is no 
essential part of the trade-mark claimed and by which 
the brand, in connection with which they are used, be- 
comes known. This is specially so when the trade-mark 
is a fancy name or coined word. 

. We repeat that we do not think that Congress intended 
to confer upon the Commissioner of Patents authority to 
say to an applicant how much or how little of the embel- 
lishments appearing, in connection with what may be* 
"called the essential feature of a trade-mark, form ari 
actual part of the trade-mark. Rather do we think that 
this right of selection and designation rests with the appli- 
cant. No general rule can possibly be applied, and w here 
this is the case it is unwise to attempt to exercise a power 
not expressly vested in an executive officer. 

The proper forum for the decision of such questions is 
the courts where each case can be passed upon as it arises. 
We conclude that the rejection of the appellant's appli- 
cation for registration was not w-ell founded. We there- 
fore reverse the decision of the Commissioner of Patents. 
The clerk of the court will certify this opinion and the 
proceedings of the court in the premises to the Commis- 
sioner of Patents, according to law. Reversed. 



It 



I 



m 









/^. +f./&f*s 



'POMMISSIONER'S.DECISIOITS. 



/&> 7^z^^\/cy/</^ / 7L 







Ponkuu and Son v. The Albert DicKiNStPN Company. 

Decided April 11, 1906. 

1. Trade-Marks— Same Descriptive Properties. 

Timothy-seed and clover-seed are goods of the same descrip- 
tive properties, so that the use of a mark by a party upon the 
former excludes the right of other parties to use the same mark 
upon the latter. 

2. Trade-Mark Interference— Priority— Identity of Ap- 

plicant. 
Whether the party named in an application for registration 
is the real owner of the rights represented by that application 
will not be considered in connection with priority, as the ques- 
tion is one for ezparte determination by the Examiner of Trader 
Marks after the question of priority has been finally settled. 

On priority. ,,$ 



TRADE-MARK FOR GRASS-SEED. 



1» 



Messrs. Munn & Company for Conklin & Son. 

Mr. H. N. Low for The Albert Dickinson Company. 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner of 
Interferences awarding to E. W. Conklin & Son priority 
of adoption and use of the word "King" as a trade-mark 
for grass-seed. 

The Examiner of Interferences found from the evidence 
that E. W. Conklin & Son adopted the word "King" as a 
trade-mark for timothy-seed in the year 1899 and that 
they have used it continuously since that time. He also 
found that The Albert Dickinson Company has used the 
word "King" as a mark upon clover -seed and redtop- 
seed since the year 1901. His conclusion in favor of 
E. W. Conklin & Son was based on these findings. 

No error in these findings is alleged, and none is found; 
but it is contended by appellants that they do not support 
judgment of priority against them. This contention is 
based on the grounds, first, that the right of the appellees 
to use the mark upon timothy-seed does not exclude the 
right of others to use the same upon clover-seed, and, sec- 
ond, that there is no such firm as E. W. Conklin & Son, the 
real owner of the rights represented by the appellees' speci- 
fication being Horace E. Conklin personally. 

As to the first ground, the question is whether timothy- 
seed and clover-seed are goods of the same descriptive 
properties. I am of the opinion that they are. As to the 
second ground, the question is one for ex parte determina- 
tion by the Examiner of Trade-Marks after the question of 
priority has been finally determined. 
The decision of the Examiner of Interferences is affirmed. 




COMMISSIONER'S DECISIONS, 




P Dbevet Manufacturing Company v. Liquozone fl 
!i- Company. ce| 

Decided Jam 1H, 190S. g[2j so 

1, Trade-Mark Opposition— Deh'ueee3— Appeai,. 

Held that there is no right oi ispjMal from the decision of the 
Examiner of Interferences srorruliag a demurrer to the notice ■ 
of opposition to the registration of a trade-mark. 
2^ Same— Sake— Same. 

No exception to the rule that then in no right of appeal from 
the decision of the Examiner o.C interferaneea overruling a de-' 
murrer in trade-mark opposSi<si -., ill ie made where the circum- 
stances are not of sueh an ungual or extreme character au will- 
justify extraordinary action. a 

On petition. l"«#I 

trade-mark for germicidal remedies. ''J1OT 

Messrs. Mason, Fenwlck & Laisrence for The Drevet 
Manufacturing Company. 

Messrs. Rector & Eiolen and Messrs. Bacon <& MHans 
for The Liquozone Company. 
Allen, Commissioner: ' 

This is a petition by The Liquozone Company praying 
that their appeal from the decision of the Examiner of In-r 
terferences overruling their demurrer be accepted and de- 
termined. 

The petitioner is aware, it is stated, that the usual 
equity practice is such as to preclude an appeal from a de^ 
eision overruling a demurrer, L.ut contends that this prac- 
tice should not be fcliov^d in -one Patent Office. No good 
reason is found in support of ink' contention. The de, 
eision of the Examiner of interferences'.aifords in general 
sufficient basis upon which to require parties to proceed 
with the pleadings. The effects of the occasional errors 
which may stand uncorrected through denial of an appeal 
in these cases are not of sufficient importance to justify 
the burden upon the parties and the Patent Office of the 
many unfruitful appeals which would undoubtedly be 
taken if the practice permitted appeals . 

The petitioner requests that if a general right of appeal 
m these cases is not recognized an exception be made in 
this case as an exercise of supervisory authority. The cir- 
cujTs ahces to which attention is called in support of tkig 
request are not of such an unusual or extreme character aa 
would justify extraordinary action. ^ ,,.,, 
The petition is denied. 



COMMISSIONERS DECISIONS. 



/ 



z 3 crfr /&&3/?s\ 




COMMISSIONER'S DECISIONS, 



The D. Kelly Company v. Tee Theobald"& Son Co. ». 
Joseph Stkiebiohv. B. Kdhl & Co. v. Sig. & Sol H. 



FbEIBERG. 



j2 



Decided April 11, 1906. 
Teade-&aek Interference— Interference in Fact. 

Held that fee words "Mill Springs," "Mill Stream," "Mill 
View,";ana "Mill Brook " as trada-marks for whisky interfere, 
| Appeal ofimotiop. 




TEADE-MARK FOE WHISKY. JjjjgJS J ,1 

Mr. Arthur S. WaUaci for all parties. ' i] ■ j ] || 
Allen, Commissioner: -^ 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to dissolve an interference. 

Dissolution is sought on the ground that the marks do 
not interfere. The issue as stated in the redeclaration of 
the interference is the words "Mill Springs," or the words 
"Mill Stream," or the words "Mill View," or the words 
"Mill Brook," for whisky. / The word "Mill" is of such 
importance to the mark in each case and the remaining 
word is so similar in meaning in the different cases that 
registration of any two of the marks would be likely to 
result in confusion or mistake in the mind of the public or 
to deceive purchasers. I am in no doubt upon this point 
in spite of the affidavits to the contrary which have been 
filled. The interference should therefore continue. 

The decision of the Examiner is affirmed. _ it jjj 



•jDQMMISSIONER'SJDEOISIONS,! 



'Ml 



I* " Ex £AETE R. STEINECKE COMPANY. 

Decided April 10, 1908. .^ ^Jg J 

Labels— EEGiSTEABiLny— Shields off Countries. 

Held that a label upon which the shields of certain countries 
are shown will. not J>e registered, for the Reasons given in ex 
parteSdU, (98 0. G„ 2366.) u, _, ,_^_ „, ; .; 

ON APPEAL. MJ®»- ^*^^ M , ,j,®iM 

«-* LABEL FOE CIGARS. ]'8f ^ "1 1 JiSii^JS 

Messrs. Beeken & Spaulding for the applicants. : >^ ; "- | 
Allen, Commissioner: g**B^.jP ' 

This is an appeal from the action of the Examiner refus- 
ing to register a label. 

The label contains the shields of the United States and 
Cuba, and the Examiner refused registration on this 
ground, citing ex parte Ball (98 O. G., 2366) and ex parte 
Tlie Brandsviile Fruit Farm Company, (103 O. G., 660.) 
The applicant urges that the use of the shields in his label 
affords no good reason why it should not be registered. 
He also denies the authority of the Office to refuse to regis- 
ter on that ground. The decision in the case of ex parte 
Ball, supra, is believed to be sound both in points of reason 
and authority. u 

The action of the Examiner is affirmed. JB fl 



HOOSIl Ex parte West's Nephews. J-j 

Decided April 26, 1906. •-, 

Teade-Mabks— Material Differences. 

A mark consisting of the^words and character "Black & 
Blue," printed along the diagonal line of division between a 
black portion and a blue portion of a rectangular label, Held to 
differ sufficiently from the registered mark "Black & White" 
to prevent confusion ordeceptlon. ^_ 

On appeal. J ;21 

trade-mark for scotch whisky. 'J 5J?tSJ \L 

Mr. A. Parker-Smith for the applicants. , MW1% % 
Allen, Commissioner: 

This is an appeal from the action' of the Examiner of 

Trade-Marks refusing to register a trade-mark for Scotch 

whisky, which is described as follows : 

* * * the words and character" Black & Blue" printed along 
the diagonal line of division between a black portion and a blue 
portion of a rectangular label. 

The refusal is based upon the registered trade-mark to 
James Buchanan, No. 37,852, February 25, 1902, which 
consists of the words "Black & White" used on whisky. 

These marks are not believed to resemble each other so 
closely as to be likely to cause confusion or mistake in the 
mind of the public or to deceive purchasers. 

The decision of the Examiner of Trade -Marks is re- 
versed. 





\jT*// 



COMMISSIONER'S DECISIONS, 




-\ 



II £ l Ex parte Rogers & Havard. 

DecidedlApril 1%, 1906. 
Trade-Mark— Registrability. 

Held that "Fineating" is not registrable as a trade-mark for. 
butcher-meat. ^ 

! On appeal. 1 ■■■-.-. y :,\ 

i. TRADE-MARK FOR BUTCHER-MEAT."]' 

Messrs. Dyrenforth, Dyrenforth & Lee for the appeli 
lants. 
Allen, Commissioner: ™n«-^wmwn 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register the word "Fineeting" 
for butcher-meat. "■■.vJM«®lfij,i;f!SIl*)«i!3 

The Examiner held that the word as pronounced is de- 
scriptive of a characteristic of the goods and that under 
such circumstances it is not made registrable by misspell- 
ing. The position taken by the Examiner is sound, and 
his action is affirmed. . „ m .,., .^^dsii. 



/^j/7-^. <^f. J*//% 




eOMMIfiSIONEE'S BEOI&ONS. 



Ex paste Ambrosia Chocolate Company. I^l 

~~- Denied April IS, 1906. f 

Labels— Registrability— Printed Title. 
. Held that a mere title for goqds printed in ordinary type with j 
ordinary printers' ornamentation is not registrable as a label, 
since it is not an artistic production, required in its production 
no exercise of the creative powers of the mind, and displays no 
originality in design, ^j „ ._, 

On appeal. ~* / - 

label fob chocolate. 1 j! *.'.**» 31 

%Mr. George Wetmore OoUes for the applicant. ~]'Yi i .',. ; 

Allen, Commissioner: 

This is an appeal from the action of the Examiner re- 
fusing to register a label. 

The label is correctly described in the Examiner's 
statement as follows: 

The label is printed on yellow paper and comprises the words 
"Ambrosia Premium Manufactured by Ambrosia Chocolate Co. 
Milwaukee, Wis." and words descriptive of the quality of the 
goods and dirsctions for the uso thereof. All the word/ are in 
ordinary type, except the word "Ambrosia" in the. name of the 
applicant, which is in a peculiar form of scrirjt with a flourish 
beneath. The words themselves are inclosed within a common 
style of printers' border. 

It is not contended by the applicant that Ms label is an 
artistic production. Ho claims, however, that it should 
be rc-gi=.. red as a result of intellectual labor. I am of the 
opm'jr, i' at t: 3 applicant's label is not the result of in- 
tellectual labor in such a sflnso as will entitle it to registra- 
tion. Its production required no exercise of the creative 
powers of the mind, nor docs it display any originality in 
design. A similar case was considered in ex parte Bald- 
win (C. D., 1902, p. 54) and the same conclusion reached, 
fcThe decision of the Examiner is affirmed, j __ 



1 1 1 ' w 

DECISIONS OF THE U. S, OOTTBTS. 

Court of Appeals^ the District of Columbia^ 
Gaines & Co, v. Enecht & Son. . j fHJ 

Decided Mai) 9, )906. • - 

1.. Trade-Marks— Constitutionality op Act— Standing of Op« 
poser Denting Same. 
Where it is urged that the Patent Office is without jurisdic- 
tion to grant registration of a trade-mark for the reason that 
the act under which the application is made is unconstitutional 
£and void, Held that if the act is void the opposer has no stand- 
ing as a party to this proceeding, for the procedure upon which 
theopposer challenges the validity of the act is provided by the 
act itself; 

2. Same— same— Not Considered Upon Opposition Proceed- 

ings. 
Held that a party opposing the registration of a trade-mark 
cannot raise the question of the validity of the Trade-Mark Act " 
for courts sit only to protect and vindicate rights of persons ol 
property, and the certificate of registration must be read in con- 
nection with the act and derives its whole vitality from the act. 
If the act is voidjso is the certificate void upon its face, and no 
right of property is infringed upon or threatened. 3 . , 

3. Same-Similarity-" Old Crow "and "/Raven Valley." " 

Where the mark of an applicant consists of the words "Raven 
Valley" accompanied by a pictorial representation of three 
ravens in the bare limbs offeree and the opposer's trade-mark 
consists of the words. v.Qid.CrW"f. and, it is stated that the 
words have been used by. customers ofihe opposer accompanied 
by the picture of a crow, even admitting that fee words ';'t>ia' 
Crow " as a trade-mark would be interfered with by the picture 
of a crow and that the raven and the crow belong to the same' 
family, Held that there Is no such similarity between the marks' 
of the parties as wouldjustlfy refusin g ;the applicant registration.' 
Mr. J. S. Barker and Mr. James Low Eopkim for the ap- 
pellant. 

Mr. E. T.Fenwick and Mr. A. E. Wallace for the ap- 
pellee. 

Stafford, JL-. 

This 6* an, appeal from the Commissioner of Patents 
under the Trade-JWCwkA ct of February 20, 1905. Knecht 
& Son filed a.n application to register a trade-mark, which 
was examined and passed for publication. Gaines & 
Company opposed the registration under section 6 of said, 
act. We shall speak of.Kneeht & Son as the applicant anc| 
Gaines & Company as the opponent. The opponent con- 
tends that the act is unconstitutional, and offers that as a 
reason why the applicant's mark should have been refused 
registration. The opponent also objects on the ground 
that the applicant's m,ark is similar to the mark of the op- 
ppnent,, and wpu^dj fy. likely to lead to confusion and enable 
| the app|eant to perpetrates a, fca^d upon the public. 

I. Tie opponent in its notice c£ opposition, sites' that it 
is the sp^e and exclusive owner o* a, traofe-xnajck for whisky 
consisting of the words "Old Crow;M that this, trade-mark 
has been registered in the Patent Office four times^-once 
under the act of 1870, and three times under the act of 
1881, giving, the date of each certificate; that the right and 
title qf the petitioner in and to the said trade-mark has 
been adjudicated in two cases therein cited; that appli- 
cant' s mark presents the same general appearance to the 
e#e as. the opponent's, and would enable the former to per- 
petrate a fraud upon the public. Then the opponent adds 
that the Patent Office is without jurisdiction to grant regis- 
tration for the reason that the act under which application 
is made is unconstitutional and void. 

If the act is void it may be pertinently inquired, How 
can the opponent make use of the act for the purposes of 
opposition? A void act must he void as to the opponent 
»o less than as to the applicant. It cannot be that an act 
utterly void because dealing with a subject-matter upon 
which the legislature had no right to speak nevertheless^ 
provides the procedure upon which the opponent may chaj, 
lenge the validity of the act itself. The opponent has nq I 
standing whatever as a party to this proceeding exoept by '• 
the provisions of the very act which he says is entirely void I 
Therefore, his objection, if true, cuts the ground from 
under his own feet. • 



But there is another reason why the opponent cannot 
raise the question. Courts sit only to protect and vindi- 
pate rights of persons or property. It will not be claimed 
that any right of person is in danger here. Neither is any 
right of property infringed upon or threatened if tha act 
is unconstitutional and void. What harm can it do the 
Opponent to have another trade-mark registered under an 
act which is void upon its sace? The certificate of regis- 
tration must be read in ponnecrion with the act and derives 
its whole vitality from the act, and if the act itself is void, 
so is the certificate void upon its face. This is not a pro- 
ceeding in the nature of a proceeding to have a cloud upon 
the opponent's title removed, and if it were, it could not be 
maintained, because an instrument or a proceeding utterly 
void upon its face does not constitute a c]pud. (Pomeroy's 
Eq : Jar,, 34 fid., sec. 1399, and note.) It is, indeed, pro- 
vided in section 16 of the act that registration under its 
provisions shall be prima facie evidence of ownership, and 
when an instrument is made prima facie evidence of owner- 
ship, it is ordinarily held to con^tiate a cloud, but if the 
act itself is void, so is this provision, which is a part of it. 
Those statutes which make tax-deeds prima facie evidenc e 
of title are not unconstitutional and void, and, therefore 
such deeds are prima facie valid, but the opponent's con- 
tention, if correct, destroys this provision with the rest. 
No extrinsic evidence is required to show that the act is 
unconstitutional and no extrinsic evidence could make a 
certificate under it of any force j consequently, registra- 
tion under such an act can do the opponent no barm. Un- 
certainty of law, if any be recognized as existing, certainly 
does not help to make an instrument or a proceeding a 
cloud. Moreover, the opponent's contention is not that 
tbe unconstitutionality is uncertain, but that it is certain. 



/J^> 




2 I 



There is still another consideration. This is an appeal . 
from the decision of an officer of the executive department 
performing a ministerial act. He has treated the statute as 
valid, and so he ought to have treated it until it is other- 
wise determined by the courts. As he remarked in his 
opinion: 

Such registration docs not create a property right in the appli- 
cant or take away the property right of another, but is merely a 
record of the applicant's claim of title. The real right of the appli- 
cant is subject to investigation and determination in suits brought 
in the courts subsequently either by or against him. The ques- 
tion whether that registration constitutes 'prima facie evidence of., 
ownership may call for a determination as to the constitutionality 
of the law providing for registration. It is believed that this Of-, 
fice should leave the determination of that question to the courts 
in the regular way. (Schumacher v. Marble, 3 Mackey, 32.) 

It may be true that the Commissioner acts in a judicial 
capacity in determining whether the applicant is the owner 
of the trade-mark, and whether it is one of those marks the 
registration of which is prohibited, but when he has deter- 
mined these in favor of the applicant the act to be per- 
formed by him is ministerial merely, and that is the act 
which it is claimed he should have refused to perform on 
the ground that the statute is unconstitutional. Such 
judicial proceedings as there are issue and culminate in a 
purely ministerial act, — the mere registration of a mark 
which if the statute is void cannot possibly prejudice the 
right of the opponent or of any one else. It is not as if the 
culminating act interfered with the person or property of 
others. We sit to review the action of the officer from the 
same standpoint which he was bound to take. Although 
the case is now before a court, the case itself is not changed, 
nor are the rules changed by which it should be decided. 
It is for this court to say merely whether his decision was 
right or wrong. We think he did not err in treating the 
act as valid. When some case shall arise in which 
rights of person or property must be affected by the deci- 
sion, it will become necessary to consider the question now 
attempted to be raised; but to pass upon it now would be. 
to decide a question of theory alone, and this is not the, 
province of a court. (Clough v. Curtis, 134 U. S., 361, 372;. 
Chicago R. B. Co. v. William, 143U. S., 339, 345; California 
v. San Pablo B. B. Co., 149 U. S., 308, 314; Brown v. Boot, 
18 App. D. C, 239, 243.) The act purports to provide 
mpans for the protection and enforcement of rights ac- 
quired by complying with its provisions. When any of 
these means, are sought to be turned against the opponent 
he will, if his contention is sound, have a, perfect defense in 
the unconstitutionality of the act. (Fifls v. AtcGhee, 172 
U. S., 516.) 



II. The second question is, Whether the mark of the ap- 
plicant is so similar to that of the opponent as naturally to 
lead to confusion and enable the applicant to perpetrate a 
fraud- The notice of opposition states, that the opponent's 
trade-mark consists of the words "Old Crow," and then 
adds that the words have been used hy customers of the op- 
ponent accompanied by the picture of a crow. The mark 
of the applicant consists of the words "Raven Valley" 
whisky accompanied by a pictorial representation pf three 
ravens in the bare limbs of a tree. Even admitting that 
the words " Old Crow " as a trade-mark would be interfered 
with by the picture of a crow, and that the raven and the 
crow belong to the same family, the question still remains, 
Whether the two marks are so nearly alike that purchasers 
would be likely to be deceived and misled into the belief 
that they were buying the goods of the applicant? There 
is no striking similarity between the picture of a single 
crow as used on the labels of the opponent's customers and 
the picture of three birds of smaller size in the dead branches 
of a tree, and when the words "Raven Valley" are con- 
sidered they are so different from the words "Old Crow" 
that any confusion or deception would be very improbable. 
It appears that the applicant has been using this mark for 
a dozen years, and that no action has ever been taken 
against it by the opponent, and it does not appear that any 
one has ever been deceived in fact. We agree with the 
Commissioner that there is no such similarity between the 
characters as would justify him in refusing registration. 

The decision of the Commissioner is, therefore, affirmed, 
and it is ordered that this decision and the proceedings in 
this court be certified to the Commissioner of Patents as re- 
quired by law. 



COMMISSIONERS DECISIONS, 






$F McLopqhuk Brothers v. Flinch Cabd Co.'^J-^ 

Decided April 10, 1906. ,<t> | 

ISrade-Mark Opposition— Printing Testimony. 
, Where printed testimony was not filed until twenty-one day* 
alter the date of final hearing and no satisfactory excuse Is 
presented for the delay, Held that the decision of the Examinee 
ol Interferences dismissing the opposition should be affirmed, 
Appeal oh motion. 

TRADE-MARK FOR GAMES. "J| ajijfl 

Mr. A. BeU Malcomson for McLougbJin Brothers. "V 

Messrs. ChappeU & Earl for Flinch Card Co. ^ 

Allen, Commissioner: *i 

This is an appeal by McLoughlin Brothers from the de- 
cision of the Examiner of Interferences dismissing the 
opposition upon the default of McLoughlin in the matter 
of printing testimony. 

The date set for final hearing was February 5, 1906, 
The printed record of McLougbJin Brothers was not filed 
until February 26, 1906. The showing made by Mc- 
Loughlin Brothers to excuse the delay has been reviewed 
and found insufficient. 

T^e decision of the Examiner of Interferences is affirmed. 



/A3 (9. -i -/&*-$ 

OOMMISSIOUBR'S DECISIONS 




dOMMISSIOtfEK'S.DEQISIONS,! 



It' 



i - ----- Ex parte J.W.Howb & Son. 

Decided April 18, 1906. 
1 LABE^-REGISTRABIUTY-ARTISTIC: VALUE OB IOTELLEC, 

'" Laiet a™Jstrable, to conformity with the law of copy- 
H^^yVriC' ground that they are of artistic value or 

2 - S NotliS of rules will.t.e made to the Patent OfficJ. 
to dSi trie degree ifcjtihUpfa intellectual ment displayed 

when recognised to be of a character winch ,. commonly re. 
JrTed^sfte result of artistic or intellectual effort or which. 
toight properly fS|'fi> regarded. 

On appeal. jL 3 " * ' : 

v LABEl FOB MEDICINE. * 

Mr. James^ W. See for the applicant. J 1 J ' j fl I 
Awes, Commissioner: " _•.•«. 

This is an appeal from the action of the Examiner refus- 
ing to register a label. 

The Examiner in his statement upon the appeal says of 

the label as. follows; 

) label has any .^'^fS^^.^sible influence upon sci- 
I e^cTor th^usX arts' " 8 ft i°s7either P an artistic products nor 
! an intellectual production. 

' The conclusions thus set forth are believed to be correct*. 
In view thereof refusal to register was proper. 
' The applicant urges that there is no warrant of law fqr 
requiring that a label must be an artistic production in 
order to be registrable. The statute provides that the 
Commissioner of Patents shall have control of the registry 
of prints and labels of a certain class and that his actiqns 
shall be in conformity with the regulations provided b,y 
law as to copyright of prints, except as to fees. Labels 
are registrable, in conformity with the law of copyrights, 
only on the ground that they are of artistic value or that 
they are useful as the products of intellectual effort. Jo 
nice application of rules will be made in the Patent Office 
to determine the degree of artistic or intellectual merit dis- 
played by a label, but the label will be registered as a mat- 
ter of course when recognized to be of a character, which is 
commonly regarded as the result of artistic or intellectuaj 
effort or which might properly be so regarded. When not 
f such a character, however, it does not belong to the 
class of things for which copyright is provided and should 
not be registered merely because it is called a label. I do 
not doubt the authority of the Patent Office to recognize 
this distinction. 

The applicant also urges that his label does display ar- 
tistic merit. I am of the opinion, however, that] it be- 
longs to a class of labels which are not intended for the 
production of artistic effects on the beholder and which do 
fiot, in fact, produce any. 44 jM 

The action of the Examiner is affirmed. ■ ' . . . j _, 



/#>. *JL 




/ J^^O 



Rice & Hoohstek v. Fishel, Nesslee & Co. 

Decided May f, 1908. 
i. Trade-Mark Interference— Registrability op Mark- 
Mark Not Within the Issue. "K 
Parties are not entitled to have considered as a matter of 
' riglft in connection with the question of priority the registra- 
bility of the mark or the conformity of a mark with the limita- 
tions of the issue. . . 
3*, Trade-Mark— Registration Under Act op 1870— Evidence 
of Ownership. ' * gg 
Registration under the unconstitutional act of 1870 is not 
prima fade evidence of ownership to those cases where the cer- 
tificate of registration sets forth that the mark has not been 
used to business. 

Petition for rehearing. "V» « '^WMMMM .:.': 

TRADE-MAEK-JF0R|DRYtG00D3. ,.-7 1 

Messrs. Wise & Licktenstein for Rice & Hochster.Ji if§ 
Mr. James Hamilton for Fishel, Nessler & Co. 'j$& 
Allen, Commissioner: 

This is a petition for rehearing of the appeal of Fishel, 
Nessler & Co. from the decision of the Examiner of Inter- 
ferences awarding priority of adoption and use of a trade- 
mark to Rice & Hochster, upon which appeal my decis- 
ion of April 26, 1906, was rendered.' 

As a basis for this petition it is alleged that, so far as 
appears from the decision, certain contentions made upon 
the appeal were not considered. The contentions referred 
to are, first, that Fishel,' Nessler & Company's mark does 
not come within the issue, and, second, that the issue is not 
registrable in view of a prior registration. 

The question whether the mark of petitioner comes 
within the issue was considered in rendering the decision 
in the interference. In the decision in the opposition 
which was referred to in the decision in the interference 
and rendered the same day/ it was stated that the marks 
of the parties so nearly resemble one another as to be likely, 
if both are used, to cause confusion or mistake in the mind 
of the public and to deceive purchasers. It was also point- 
ed out in that decision that the goods upon which the marks 
are stated to be applied by the various parties are of the 
same descriptive properties. The contention that the 
mark of Fishel, Nessler & Co. does not come within the 
issue is regarded as fully disposed of by these portions of 
the prior decisions. 

As to the contention that the marks are not registrable 
in view of a prior registration, to which attention was 
called on the appeal, it is noted that the prior registration 
is one under the unconstitutional act of 1870. The state- 
ment of said registration sets forth that the mark had not 
been used in business, though the registrant proposed to 
Use it. Such a registration is not prima facie evidence of 
ownership, as was pointed out in Vanien Bergh & Co. v. 
Belmont Co., (99 O. G., 1624.) No error arose through 
the failure to consider this registration in connection with 
the appeal. ■• -«^ 

It may also be stated that petitioner is not entitled to 
consideration as a matter of right in connection with the 
question of priority upon either of the contentions which he 
now reasserts. 
The petition is denied. ,$j 



wm***mmm^* 



I* 



-~ Rice & Hochster v. Fishel, Nessler & Co. II 3 

■ Decided jlprii 26, ISOff. 
}. TRADE-MARK OPPOSITION-CHANGE IN FIRM-EVIDENCE OS 

Transfer of Title. ,,.„,„ „™ 

Where the opposer firm was originally composed of two mem- 
bers and subsequently another member was admitted and 
the** is no direct evidence of transfer of title from the old firm 
to the new, Held that the facts proved raise a presumption of 
continuous ownership of the mark by the present °PP°n<* ts 
from a date prior to that of the applicant's filing date, and 
this is sufficient to sustain an opposition or an award of priority. 

2 Same-Sales Confined to a Single State. 

It is not necessary in order to sustain an opposition or a 
judgment of priority that sales by the successful party shall 
be made outside of a singlo State. 

3 trade-Marks-Goods of Same Descriptive Properties. 

Held that horn hair-pins are goods of the same descriptive 
properties as combs, hair-pins, and other hair ornaments. 
I Appeal from Examiner of Interferences. . ' i 

TRADE-MARK FOR COMBS, HAIR-PINS, ETC. ^ , 

Messrs. Wise & LichUnstein for Rice & Hochster. •*"] 
Mr. James Hamilton for Fishel, Nessler &€o. ' 
Allen, Commissioner: ™ 

This is an appeal by Fishel, Nessler & Co. from the de- 
cision of the Examiner of Interferences sustaining the 
opposition of Rice & Hochster to registration by appel- 
lants. 

Fishel, Nessler & Co. filed their application on April 
11, 1905. The mark shown by them consists of [the rep- 
resentation of a tortoise with the letters "F. N. & Co." 
upon its back and a crescent partly inclosing the tortoise, 
with the word " Torshell " upon the crescent. The 
goods stated are combs, hair-pins, and other hair orna- 
ments. They took no testimony. Rice & Hochster took 
the testimony of two witnesses. The Examiner of Inter- 
ferences found from this testimony that Rice & Hochster 
have established adoption in August, 1S97, and continu- 
ous use since that date of a mark for hair-pins and hair 
ornaments which includes the representation of a tortoise 
having a monogram on its back. He held that Fishel, 
Ne'ssler & Co. are not entitled to registration upon their 
application in view of such use of the mark of Rice & 
Hochster. No error is found in this conclusion. 

Several distinct contentions are made upon this appeal 
as reasons why the appellants are entitled to registration, 
notwithstanding the evidence produced in the course of 
the proceedings in opposition. 

The difference in the marks of the appellants and ap- 
pellees is urged as showing that there is no sufficient con- 
flict upon which to sustain the opposition. I am of the 
opinion that the tortoise with letters upon its back in the 
applicants' mark causes their mark to resemble so closely 
the mark of Rice & Hochster as found in the latter's Ex- 
hibit 3 as to be likely to cause confusion or mistake in the 
mind of the public or to deceive purchasers. , 

It appears that the firm of Rice & Hochster was ori- 
ginally composed of two members and that about four 
years ago another member was admitted. Appellants 
contend that in view of this change and the absence of 
direct evidence of transfer of title from the old firm to the 
new the opposition must fail. The contention is of no 
force. The facts proved raise a presumption of contin uous 
ownership of the mark by the present opponents from a 
date prior to that of the applicants' fifing date, and this is 
sufficient to sustain an opposition or an award of priority. 
It is contended by appellants that the testimony taken 
by appellees shows the latter's use of the mark to have 
been deceptive, and it is urged that the opposition is 
therefore not entitled to consideration in view of the prin- 
ciple "He who comes into equity must do so with clean 
hands." No such deception is found in the facts alleged 
as would justify disregard of the case against the appellants 
which has been made out in this proceeding. 




Appellants' most strenuous qttack upon the sufficiency 
of the proofs produced by the appellees is based on the al- 
leged failure of appellees to establish sales by them out- I 
side of the boundaries of a single State. It is not neces- ; 
sary, however, to sustain an opposition or a judgment of I 
priority that sales by the successful party shall be made 
outside of a single State. The ownership of the mark by 
an opposer or interferant, although the use of the mark by 
him has been confined to a single State, is undoubtedly 
sufficient under section 5 of the TradrMark Act to defeat 
registration by a subsequent user or the mark and to 
support judgment of priority to the prior user. No reason 
or authority is found upon which to base a different con-; 
elusion. The sufficiency of the appellees' proofs to estab? 
lish sales even within the State is also attacked. Appel- 
lees' proofs are regarded as sufficient in this respect for 
the reasons given by the Examiner of Interferences. 

The question is raised whether the goods upon which 

the appellees' mark was used have the same descriptive 

properties as those upon which the applicants' mark is 

alleged to be used. Appellees state that — >\ 

There is not a word, except the testimony of the party in inter- 
est Rice, to show that either of the markij claimed by the appel- 
lees has been used on goods other than horn hair-pins. 

It is not at all clear that any further testimony than that 
of Rice is necessary to establish the fact. However, I . 
have no doubt that horn hair-pins are goods of the same 
descriptive properties as combs, hair-pins, and other hair 
ornaments upon which use of the mark by appellants is 
alleged. »,s«j| 

The decision of the Examiner of Interferences is affirmed. 



Court of Appeals of the District of Oolunibia. 
In ee American Glue Company, jg 

Decided April 10, 190S. ?*$§£ ' | 

Trade-Mark— Registrability. 

Held that a mark which simulates the Great Seal of the United 
States is not registrable as a trademark under the act ol Feb- 
ruary 20, 1905. ''■'"" 

Mr. Vere Goldwaithe for the appellant. A 

Mr. John M. Coit for the Commissioner of Patents. " 1 
McComasjj/: 

This is an appeal from a decision of the Commissioner o| 
Patents refusing to register an alleged trade-mark. There 
is a pictorial representation of the mark and it is described, 
in the application as follows: 

The trade-mark consists of the words "New England" to- 
gether with a representation of a spread-eagle holding in its talons 
arrows and an olive branch and having a shield upon its breast. 

The rulings of this court in the application of Cahn, Belt 
and Company, and in the application of the William Con- 
nors Paint Mfg. Company, determine our decision in this, 
case. The pictorial representation and the words of der 
scription here more nearly simulate the Great Sea] of the 
United States than does the proposed trade-mark, (ie?, 
scribed in the application in the last-cited case, 

This court is slow to interfere with property rights, but 
as it has heretofore said in discussing the act of February 
20, 1905, which prohibited registration of a trade-mark 
like this, no person has had in the sense of that act an " ex. 
elusive use" of the Great Seal of the United States, and no 
person can claim a prescriptive right to use a mark pro- 
hibited by law. The Commissioner of Patents properly 
refused registration to the mark we are here considering. 

Congress has declared the public policy respecting marks 
like this and has concurred in the international convention 
opposing the use of national insignia as trade-marks. 

We cannot agree with the applicant's counsel that Con. 
gress intended to recognize a vested right in persons who 
had used such marks to continue to register them and to 
prevent other citizens from registering other marks of the 
same class. The law which prohibits the use of such sinuj- 
lations of the Great Seal, as we have here passed on, ig a 
law for all alike. 

The clerk of this court will certify this opinion and the 
proceedings of the court in this cause to the Commissioner 
of Patents according to law. Affirmed. 









COMMISSIONER'S DEOISJ 




Decided April 17, 1906. 
Testimony. 

Testimony of parties in interest, uncorroborated by circum- 
stances, or the testimony of other witnesses, unsupported by 
physical evidence, of an indefinite character, affording no ground 
for satisfactory cross-examination, and taken long after the 
events recited, may well have been in error as to the facts or 
intervals of time stated therein. 

Appeal from Examiner of Interferences. 

TRADE-MARK FOR BITTERS. - ;n- j j 

Messrs. Steuart & Steuart for Muller. ' jfi 

Mr. Arthur E. Wallace for The Schuster Company. *jg| 
Allen, Commissioner: 

This is an appeal by The Schuster Company from the 
decision of the Examiner,, of Interferences awarding prior- 
ity of adoption and yse 9/ the word "Bismark" for bitters 
to Muller. 

The Examiner of Interferences found from the evidence 
that Muller adopted the mark as early as January, 1892, 
upon a package of ground roots and barks bearing direc- 
tions for making bitters from these materials and that the 
mark has been in continuous use since. It also appears 
«hat Muller has used the mark upon bottled bitters since 
1894. It appears that The Schuster Company have prob- 
ably used the mark since 1898 or 1899. That these find- 
ings are correct is not disputed; but it is contended by The 
Schuster Company that their date of adoption and use is 
carried from six to nine years back of the date 1899 by the 
testimony of their witnesses, Edward L. Schuster and Car] 
F. Schuster. The Examiner of Interferences held that the 
packages of ground roots and barks sold by Muller in 1892, 
were goods of the same descriptive properties as bitters 
I and that the testimony of the Schusters to use prior to the 
i year 1892, when Muller adopted the mark for these pack, 
ages, was insufficient to establish the fact. 

I am of the opinion that the conclusions of the Exam- 
iner of Interferences are correct. The Schusters are par- 
ties in interest. Their testimony to use prior to 1898 is 
uncorroborated by circumstances or by the testimony of 
other witnesses. It is unsupported by physical evidence. 
It is of such indefinite character as affords no ground for 
satisfactory cross-examination. The assertions made are 
so general that the witnesses, interested and testifying long 
after the events, may well have been in error as to the facts 
or intervals of time stated by them. I am furthermore of 
the opinion that the testimony of the Schusters is insuffi- 
cient to establish any date of use of the mark in issue prior 
to the use thereof by Muller upon bottled bitters in 1894, 
so that Muller must prevail without regard to whether the 
packages of ground material were goods of the same dc^ 
scriptive properties as bitters. 

The Schuster Company took the testimony of a chemist 
and of a physician to show that representations made by 
Muller in printed matter upon his label are deceptive. 
Muller's label states, among other things, that these bit- 
ters benefit the kidneys and in small doses are a medicine 
for children. The contention of The Schuster Company 
is that the bitters are without effect upon the kidneys and 
that they are not proper medicine for children. The truth 
of these contentions is not satisfactorily established. 

The decision of the Examiner of Interferences is af- 
firmed, and priority of adoption and use is awarded to 
•Muller. .. . 






Court of Appeals of the District of Columbia, 
In re William Connors Paint Mfg. Company. | 

Decided April 10, 1906. «- 

'rade-Mark— Registrability. ""» 

The registration of a trade-mark the pictorial -representation 
t of which simulates the seal of the Department of Justice of ch,e 
j United States and in some parts the Great Seal of the United 
] States is, prohibited under section 5 of the act of February 20, 
I 1905. 

Mr. T*. W. Johnson for the appellant. fii 

I Mr. John. M. Coil for the Commissioner of Patents. ,« 
|McCojia-s,.J.:; 

Thisis-an appeal from a decision of the Commissioner of 
Patents, refusing to register an alleged trade-mark de- 
scribed as follows: 

f The trade-mark of said corporation consists of the representa- 

| tion of an eagle with spread wings, perched upon the American 
shield and holding in its exposed talons arrows and branches of 
laurel, there being in the background the representations of stars 

' and the exposed ends of several American flags, the whole being 
inclosed within concentric circles appearing within a seal-like bor- 
der, and the words "American Seal" which appear in the upper 

| portion of the seal-like border. 

The QqrrmaissioflierjOf Pajterjtsjn this case refused .to per- 
mit registration tp this, trade-mark for two reasons, and 
the first of these disposes of this appeal. Registration was 
refused because the pictorial representation is a simulation 
Qf the UnitedStates coat-of-arms. 

This court has recently decided, in the matter of the ap- 
plication.ofiCajhn, Belt and Company, that a mark such as 
is here presented'for registration is prohibited by the fifth 
section of,- the aqt of February 20, 1905. The act men- 
tioned' requires., thait registration be refused as a trade- 
mark to. suck a. mark as; — 

consists of or comprises the flag or coat-of-arms or other insign ia o £ 
the United States, or anv simulation thereof, or of any State or 
municipality, or of any foreign nation. 

The tribunal^. of the Patent Office are np^q^te accurate 
in saying that the pictorial representation in this, applica- 
tion is a simulation of the United States coat-of-arms. It 
is more nearly a simulation of the seal of the Department 
of Justice of the United States, though some parts do simu- 
late the Great Seal of the United States. 

In the Journals of Congress (Vol. IV, p. 39) it appears 

that on June 20, 1782, the Great Seal was finally adopted 

and from the order adopting, the Great Seal we quote the 

following- description, of the 9fo\erse of tiie seal, the reverse 

of the seal) not being used: 

Arms. Paleways of thirteen pieces, argent and gules; a chief, 
azure; the escutcheon on the breast of the American eagle dis- 

Elayed proper, holding in his dexter talon an olive branch, and in 
is smister a bundle of thirteen arrows, all proper, and in his beak 
a scroll, inscribed with this motto, ' ' E pluribus Unum." 

For the crest. Over the head of the eagle, which appears above 
the escutcheon, a glory, or, breaking through a cloud, proper, and 
surrounding thirteen stars, forming a constellation, argent, on 
an azure field. (See seal of the United States by Gaillard Hunt, 
pp. 23, 24; publication of the. Department of State, 1902.) 

By the act of September' 15, 1789, creating the Depart- 
ment of State, (1 Stat.,'68 f ) it was provided: 

Section 3. * * * That the seal heretofore used by thoUnited 
btates in Congress assembled shall, and b,ereby is declared to be, 
the seal of the United States. 

Section 4 provides that the Secretary of State shall be 
the keeper of the seal and sha» affix it to all civil commis- 
sions to officers appointed by tbfc President, In Mariury 
v. Madison (5 U. S„ 158) Chief Justioe Marshall made a 
memorable use of this law. As the Government grew it 
became impracticable to apply the Great Seal to all the 
commissions of officers. By successive aots of Congress 
the several departments adopted a separate department 
seal. The seal of the Department Of Justiee ig an eagle 
resting on a prone national shield, wings fluttering, with 
olive branch and arrows in his talons.' This seal the appli- 
cant in this case mainly followed, adding the stare from the 
Great Seal, and besideadded the flags.' (See Great Seal by 
Charles A. L. Totten, 1897.) It is plain that in any event 
this mark is a simulation of the described insignia of the 
United States, and the Commissioner of Patents properly 
refused registration of the same. 

It is not necessary that we consider the second reason 
assigned by the Commissioner of Patents for his refusal to 
register this mark. 

The clerk of this court will certify this opinion and the 
proceedings of the court in this cause to the Commissioner 
of Patents according to law. Affirmed. 



/^J. 







/ 



'.-/ 



(P. 



-± 



0& 



. 






/ 0,0 

Court of Appeals of the District of Columbia, 

W. A. Gaines and Co. v. Carlton Importation - 
Company. .„, ,«j . ^a'A 



Decided June 5, 1906. ' 7" 
Trade-Masks-" Old Jat " and " Old Crow ' 



' Dissimilar. " 
Held, for the reasons given by the Commissioner of Patents, 
that applicant is entitled to registration ol the words " Old J " 
and "Old Jay Rye" with the picture oi a jay as a trade-mark I 
lor whisky, notwithstanding the ownership by the opponent of 
the words "Old Crow" with a picture of a crow for the same 
goods. •*•"*! 

2. Trade-Mark: act— Constitutionality. _ i 

' "Held that an opposor is in no situation to raise the question 
of the constitutionality of the Traote-Mar-k Act, and considera. 
tion thereof declined, for the reasons 'given" in flWnes and Co.v: 
f-necht and Son, (123 O. G., 657.) B 

Mr. J. S. Barker and M- r. James : fyy> gopftns for the 
appellant. . _ ., .-,..... 

SHEP.ARD, J.: 

This is an appeal from the decision of the g^mmfssioner 
of Patents on an opposition made by the appellant to the 
registration of a trade-mark applied for by the appellee- 

On April 13, 1905, the appellee filed an application for 
the registration of a trade-mark consisting of the repre: 
sentation of a jaybird perched on the branch of a tree hav 7 
ing upon each side the words " Old J," and underneath, the 
words "Old Jay Rye." 

Notice was given of the application by publication as 
required by law, and the appellant filed notice of opposition 
to the registration applied for, on the ground that it is the 
pwner of a mark which so nearly resembles that of the ap- 
plicant that confusion is likely to result to its damage. In 
the notice of opposition appellant is represented as the 
''sole and exclusive owner" of a trade-mark for whisky 
consisting of the words "Old Crow" accompanied by the 
picture of a crow. 

The opposition was dismissed, upon demurrer, by the 
Examiner of Interferences, and on appeal to the Commis- 
sioner his decision was affirmed. 

We entirely agree with the Commissioner, and adopt the 
reasons therefor given in his decision as follows; 

Both marks include the word "old," and both include the repre^ 
sentation of a bird, but there the similarity ends. The jay as disr 
clbsed in the application and in the specimens accompanying it is 
bility be mistaken therefor. Thenamc"jay" is entirely different 
. 'entirely different in appearance from a crow and could by no possi- 
fn sound from "crow," and suggests a different idea. Ifthereisto 
be any confusion between the marks, it must be because of the as- 
sociation of the word "old" with the name of bird. I am satis- 
fied, however, that this one point of similarity is not sufficient to 
confuse the public nor to mislead purchasers "exercising ordinary 
care. 

Appellant has also attacked the constitutionality of the 
Trade-Mark Act, approved February 20, 1905, under which 
this opposition arose. 

The appellant is in no situation to raise this question in 
this proceeding, and we decline to consider it for the same 
reasons, substantially, given in the opinion delivered by 
Mr. Justice Stafford, for this court, in the recent case of 
Gaines and Co. v. KnecJd and Son, (123 O. C, 657.) 

The decision of the Commissioner is affirmed, and this 
decision will bo certified to him as required by law. It is 
bo ordered. Affirmed. a ^j ^ ^ j 



\3' 




tic &^ t ,7<r?. 

Hall and Ruckel v. Ingram. 

Decided May 26, 1906. 

Tjsade-Mark— Interference in Fact. 
'■ Held that the word "Zodenta" as a trade-mark for toilet 
preparations does not so nearly resemble the word ' ' Sozodont " 
as to be likely to cause confusioo or mistake in the mind of the 

public. 

Appeal from Examiner of Interferences. .» 

trade-mark for dentifrice. '~"H 

Notice of opposition of Hall and Ruckel, executors of 
the estate of William Henry Hall, deceased, filed February 
15, 1906. 

Application of Frederick F. Ingram filed July 3, 1905, 
No. 9,635, published January 16, 1906. | 

Mr. S. O. Edmunds for Hall and Ruckel. ' i 

Mr. James Whittemore and Messrs. Bacon & MUans for 
Ingram, i 
Allen, Commissioner: "* "' ^H 

This is an appeal by the opposers/Hall and Ruckel, ex- 
ecutors of the estate of William Henry Hall, deceased, frgni 
the decision of the Examiner of Interferences sustaining 
the demurrer of the applicant, Ingram, and dismissing their 
opposition. • 

The application is for registration of the word "Zo- 
denta" as a trade-mark for toilet preparations, and par? 
ticularly dentifrices. The opposition sets up the use of the 
word "Sozodont" by opposers as a trade-mark upon goods 
of the same character. The applicant demurred to the op- 
position on the ground that the marks are so dissimilar 
that no confusion or conflict will result from the usejof 
both. I am of the opinion that the differences betweeriTne 
two marks are more striking than the features which they 
have in common and that the applicant's mark does not 
so nearly resemble that of the opposers as to be likely by 
its use to cause confusion or mistake in the mind of the 
public or to deceive purchasers. * fHWiQ vi ■% 

The decision of the Examiner of Interferences is affirmed. 



/** <?.v! ?*y 

COMMISSIONER'S DECISIONS. 



tj/[ 



1 



William. H. Bakek, Syracuse, Inc. v. Walter Bakek 
and Company. 

1 -7 i Decided May 2B, 1000. 

1. Trade-Mark— Opposition— Verification. 

. Held that the verification required by section 6 of the act of 
February 2D, 1905, is the affidavit of the person filing the notice 
of opposition. 

2. Same— Same— Same. 

Held that a notice of opposition unaccompanied by the re- 
quired verification is ineffectual, and if the verification is not 
filed within the period of thirty days mentioned in section 6 of 
the act of February 20, 1903, the result is the same as though no 
notice of opposition had been filed. 

3. Same— Same— Date of Filing. 

Held that the complete notice of opposition must be filed 
within thirty days of the date of publication of the trade-mark 
and tha,t the failure to file a verification within that period can- 
not be cured by filing such verification subsequently, >- 

Appeal from Examiner of Interferences. 

I TRADE-MARK FOR COCOA, ETC. 

Mr. D. R. Cobb and Messrs. Meyers, Cusliman & Eea 
for William H. Baker. 

Messrs. Putnam & Putnam for Walter Baker and Com- 
pany. tM Mti -J 

Allen, Commissioner: 

This is an appeal by William H. Baker, Syracuse, Inc. 
from the decision of the Examiner of Interferences dis- 
missing his notice of opposition upon motion by the appli- 
cant, Walter Baker and Company, Ltd., for the reason 
that no proper notice of opposition was filed within thirty! 
days after publication of themark in theOFFiciAL Gazette. 

The only paper filed by the opposer as a notice of oppo- ■ 
sition within thirty days following the publication of the 
mark was not sworn to or accompanied by any affidavit. 
The Examiner of Interferences held that this paper failed 
therein to comply with the provision of section 6 of the 
Trade-Mark Act requiring the notice of opposition to be- 
verified. He also held that correction of the defect after 
the expiration of the thirty days following publication 
was not permissible. It was upon these grounds that he 
dismissed the notice of opposition. 

The appellant claims that the verification required by 
the statute for notice of opposition is not an affidavit, but 
merely an undertaking upon the part of the opposer to 
establish hi? allegations. Section 6 of the Trade-Mark 
Act provides in part: 

Any person who believes he would be damaged by the registra- 
tion of a mark may oppose the same by filing notice of opposition, 
stating the grounds therefor, in the Patent Office within thirty 
days after the publication of the mark sought to bi registered, 
which said notice of opposition shall bs verified by the person filing 
the same before one of the officers mentioned in section 2 of this 
act. 

The portion of section 2 to which reference is made in 

the above quotation is: 

The verification required by this section may be made before 
any person within the United States authorized by law to admin- 
ister oaths, or, when the applicant resides in a foreign country, 
before any minister, charge d'affaires, consul, or commercial agent 
holding commission under the Government of the United States, 
or before any notary public, judge, or magistrate having an offi- 
cial seal and authorized to administer oaths in the foreign country 
in which the applicant may be whose authority shall be proved 
\ by a certificate of a diplomatic or consular officer of the United 

I St! 

\ 




The appellant also contends that the verification re- 
quired by the statute need not be filed within the thirty 
days within which the notice must be filed, but may be 
supplied later. This contention, in my opinion, is based 
upon a strained and unreasonable construction of the ' 
statute. The verification is made by the law essential to 
the notice. It would seem that until the verification is 
supplied the notice would be ineffective and that if the 
notice does not become effective within the thirty days 
the result would be the same as though no notice had 
been' filed within that period. The applicant's conten- 
tion that the statute must be construed otherwise is based 
in part upon the assumption that the requirement of a 
verification which must be filed with the notice of oppo- 
sition is an unreasonable one. The assumption is unwar- 
ranted. If thirty days is too short a period, under some 
circumstances, in which to file a complete notice of oppo- 
sition, the difficulty lies in the provision that the notice 
must be filed in that time and not in the necessity that it 
must comprise a verification when filed. 

The necessity for verification is, in my opinion, dis- 
posed of adversely to appellant by the decision of the 
court of appeals in the case of Martin v. Martin and 
Bowne Company, (122 0. G., 734.) Upon the question 
of hardship, due to limitation of the time within which a 
complete notice of opposition must be filed to thirty days, 
the following remarks of the court in that case are perti- 
nent here: 

The intent of the law-makers is to be found in the plain language 
of their enactment. Considerations of inconvenience and hard- 
ship growing cut of the brief period allowed for the opposition, or 
the aosence of the damaged party, as was the case here, may well 
operate upon the makers of the law, but cannot justify a. judicial 
addition to the letter of the statute. (Ohio Nat. Bank v. Berlin, 
33 W. L. E., 726, and cases cited.) 

* * * **:!:* 

The right to oppose the registration of a trade-mark conferred 
by the section under consideration is a special one, and though 
deprived of its assertion by the enforcement of the letter of the 
statute, the appellant is not deprived of his right of property in 
the trade-mark sought to be registered by the appellee, if as a 
matter of fact and law he is the true owner. Aside from the usual 
remedies at law and in equity for the protection or recovery of 
property rights, he may possibly obtain a remedy through a 
declaration of interference under section 7, or by a proceeding for 
cancellation under section 13. 

r 

It is alleged as one of the grounds of appeal that the 
Examiner of Interferences erred in not suggesting a bar 
to the registration by the applicant. Failure of the Ex- 
aminer of Interferences to call attention to alleged bat's 
is not appealable error. The matter of calling attention 
to supposed bars is entirely one of discretion. Having 
determined that William H. Baker, Syracuse, Inc. was 
without standing as an opposer, the Examiner of Inter- 
ferences properly refused to consider the evidence and 
take action thereon. 

The decision of the Examiner of Interferences is affirmed. 



\ 



i States. 

I think there can be no reasonable doubt that the verifi- 
'ion contemplated by the statute is the affidavit of tho 
jon riling the opposition. 



/ ^^/ 



rr 



DE0ISI0^ofTHEU.3.00TJETS.. 

Court of Appeals of tie District of Columbia? 

" 

TaE BucmANA^ANDEBSON-NELSOH Co. V. BREEN AND 

Kennedy. ...... • 

Decided June S, 190G. 

Si 

»P' ' th e representation ot a Maltese or 

, , «w the same bearing the word 

SSffiSSS , 

"" m ?hl iwf marte « as to the 

; -v;;' ■;;';:,;.; ; ,--, 11 - k no W n ■ 

fill 

on-asanotheiisthatoi-Andeison 

.,/,, ./. I. B«*«- and Mr. James iow Hopfctn. for the 

appellant. 
Mr. 4. E. Wallace for the appellee. 

^Tand Kennedy, on March 12, 1905, filed an ap- 
plicatioD in regular form for the registration of a tradc- 
m ark used on package, of whisky, and desenbed as iol- 

Ch; 1 K - 

Publication of the application was made, and on Au- 
gust 11 1905, the appellant filed an oppositions the regis- 

tral i. aprrilcq ™*. on thc § r0Und . that ;V S 

the owner of the trade-mark for whisky consisting of the 

word " Anderson : ' , „„,* 

;^ t «||eS;^ 

Bison-Nelson Co., 

<ind 1 1 ■ , n is a fraudulent attempt to appropn- 

llU . u .. .1 ,-mark. An amendment to thooppo- 

Bition September 29, 1905, in which it was 

all ,, trade-mark "Anderson" had been regis- 

Patent Office by the Anderson-Nelson Co., 
sor of the appellant. 
TUs , !ists o{ tne representation of a Maltese 

and a panel below the same, bearing 
the word "Anderson" in white letters; the cross and 
panel appearing in red and each having a border in gold, 
as shown in B Facsimile accompanying the application 
for its registration. This may be arranged in connection 
witb ,; | e descriptive matter without materially 

altering the character of the trade-mark, the essential.; 
feature of whi. h is a Mai or Ti aplar cross and a panel 
below the av ing the word "Anderson" in white 

and panel appearing hi red and each 

having a border of gold. 

The ; further objected to the registration of 

, on the ground that the act of February 

'.cation had been made, 

was u ional. 

of Interferences sustained a demurrer 
t0 | iposi and held that the applicant was enti- 

tled to li 1 of lli:i mark " 

^^ ! ' decision and a further 

appr. ^^^ U ' court. 

£f question whether 

[^ nderson" is a proper subject 

# .Link under the statute. The 

q ingl p termination is •-'•• thi c the rc- 

he two marl b u d is calculated 

to dei : ' ' Breen 

the bi li ( that it is the 
,,].; . i.Anderson-Nelson Co. 



^^eareconvinced that the adoption of the applicant's l 
mark as described and illustrated in the record, was with \ 
no purpose to copy or simulate that of the appellant, j 
There is not the ; v between the two ex- 

cept as to the words "Anderson" and "Henderson." 
These : pell-known names of persons, counties, 

and tow d . and there is no reasonable ground of confusion 
between them. It is not probable that the purchasing 
public will understand the word "Henderson" as indi- 
cating the goods put on the market by the owner of the 
mark "Anderson." One is as much entitled to claim the 
name "Henderson" as another is that of "Anderson." 

The question as to the constitutionality of the statute 
is not considered for reasons stated in Gaines & Co. v. 
Carlton Importation Co., present term. 

We are of the opinion that the Commissioner was en- 
tirely right and his judgment will, therefore, be affirmed. 
It is so ordered, and that this decision be certified to the 
Commissioner of Patents as required by law. Affirmed. 



OQMMISSIONEE'S DECISIONS, 




International Silver Company v. William A. Rogers, 

Limited. 

Decided June S2, 1900. 

1. Trade-Mark— Opposition. 

Held that in order to defeat registration of a trade-mark under 
the proviso of section 5 of the act of February 20, 1905, relative 
to exclusive use for ten years prior to the passage of thc act 
it is not necessary that the identical mark should have been used 
by others than the applicant. The use of a mark which so 
nearly resembles that of the applicant as to cause confusion in 
the mind of the public or to deceive purchasers is sufficient to bar 
such registration. (Ex parte Star Distillery Co., 119 O. C, 904; 
Calm, Bell & Co., 122 O. G., 351) 

2. Same— Same. ~~ r ' "" 3 

Held that the words "Win. A. Rogers" arc so similar to 
"Wm. Rogers Mfg. Co." and "Wm. Rogers &Son" as to be 
likely to cause confusion or mistake in the mind of the public 
or to deceive purchasers. 

Appeal from Examiner of Interferences. 

TRADE - MARK FOR SILVER - PLATED FLAT WARE, HOLLOW WAREj 
AND TABLEWARE. 

Messrs. Bartlett, Brownell & Mitchell for International 
Silver Company. 

Messrs. Warficli & Duell for William A. Rogers, Lira-' 
ited-;. 
Allen, Commissioner: 

This is an appeal by the International Silver Company 
from the decision of the Examiner of Interferences sus- 
taining the demurrer of William A. Rogers, Limited, and 
dismissing the notice of opposition. i ^ijjjj 

William A. Rogers, Limited, is an applicant for registra- 
tion of the name "Wm. A. Rogers" as a trade-mark for 
silver-plated ware. The application alleges continuous 
use of the mark since the. year 1894. The International 
Silver Company o ppose registration of the mark." Wm. A. 
Rogers" to the applicant, alleging that the opponent and 
its predecessors have continuously used the names "Wm. 
Rogers Mfg. Co." and "Wm. Rogers & Son " since thc year 
1S76 as trade-marks for silver-plated ware. The appli- 
cant demurred to the notice of opposition on the grounds 
(I) .that the applicant's mark "Wm. A. Rogers" does not 
si tfjosely resemble opponent's marks "Wm. Rogers Mfg. 
Co. "'and "Wm. Rogers & Son" as to cause confusion in 
thc mind of the public or to deceive purchasers; (2) that 
it does not appenr from the notice of opposition that the 
mark "Wm. A. Rogers" was not in actual and exclusive 
use as a trade-mark of the applicant and its predecessors 
for ten years next preceding the passage of the act of Feb- 
ruary 20, 1905. The Examiner of Interferences overruled 
the demurrer as to the first ground and sustained it as to 
the second ground, dismissing the notice of opposition. 

The action of thc Examiner of Interferences sustaining the 
d< murreras to the second ground is the basis of this appeal. 



^ 






I conclude , with the Examiner of Interferences, that the 
mark of the applicant and the marks set up by opposer are 
so similar, as to be likely to cause confusion or mistake in 
the rnind-oi the public or to deceive purchasers, but hav- 
ing so concluded I must disagree with his finding that the 
applicant is entitled to registration notwithstanding any- 
thing contained in the notice of opposition. The position 
of the Examiner of Interferences sustaining the demurrer 
as to the second ground is that prior use of similar marks 
by another party is not a bar to registration where tlie ap- 
plication is made under the ten-year clause of section 5 of 
the Trade-Mark Act, and the mark is one of the non-tech- 
nical character for the registration of which the ten-year 

clause provides. This clause is as follows: 

* * * nothinehereinshaUpreventtheregistrationofanymark 
used by tte appoint or his predecessors, or by *ose torn wh o m 
title to the mark is derived, in commerce with foreign nations or 
anon" the several States, or with Indian tribes, which was in 
actuaFana exclusive use as a trade-mark of the applicant or his 
predecessors from whom he derived title for ton years next preced- 
ing the passage ol this act. 

To be entitled to registration under this clause the mark 
must have been in exclusive use for the period stated. I 
think there can be no reasonable doubt that absolute iden- 
tity with marks used by others is not necessary to defeat 
exclusive use. When the differences between marks are 
insignificant, trifling, or not readily distinguishable, the 
marks are the same for all practical purposes, and it is 
not reasonable to believe that the intent of the law is to 
register on the ground of exclusive use where practically 
the same mark lias been used by others. Having con- 
cluded that absolute identity is not required to defeat ex-, 
elusive use, it becomes necessary to determine what degree, 
of similarity is necessary in order to have that result. The 
only logical test, in my opinion, to be applied in determin- 
ing whether two marks are so similar that the use of one 
will defeat exclusive use of the other is the test given by 
the statute for determining what marks are so similar that 
ownership and use of one by one party will defeat registra- 
tion of the other by another party. This test is whether 
the marks so nearly resemble one another as to be likely 
to cause confusion or mistake in the mind of the public or 
to deceive purchasers. When marks are so similar, they 
are practically one and the same mark. 

My conclusion herein is in accordance with my conclu- 
sion in ex parte Star Distillery Company, (119 O. G., 964,) 
and both conclusions are supported by the decision of the 
court of appeals in the case oi Calm, Bell & Company, (122 
O. G.,354,) where it was held that a mark had not been in 
exclusive use by appellants, in the sense of the ten-year . 
proviso of the sttutc, by reason of the fact that this ' 
| mark was a simulation, of another known mark. The 
language of the court is as follows: 

The application in this case admits that the marl: we are now 
considering is a simulation of the arms or seal ol the Sta to of Mary- 
land 'with variations it is true, but still a simulation of the coat 
of-arms of Maryland. The coat-of-arms of Maryland was never 
m the exclusive use of the applicants, during any period, nor could 
th» applicants ever acquire an exclusive use as a trade- ji.Jk ol tne 
Stqte coat-of-arms In the sense of this proviso, the applicants 
hStteStoiltat never had iV exclude, use of this simulation 
of the Maryland coat-of-arms. and for this reason the appellants 
trade-mark sought t a be registered does not come within the last 
proviso of the fifth section. 

& The conclusion of the Examiner of Interferences is based 
in part upon the case of Rogers v. Wm. Rogers Mfg. Co.,. 
(70 Fed. Rep., 1019,) where the Court refused to restrain 
the defendant from using the name "Wm. A. Rogers" 
upon the ground that — 

* * * the affidavits do not contain sufficient facts to justify 
She conclusion that Rogers was using his name unfairly or dishon- 
estly in the business in which he was entitled to use it. 

I do not find in this decision holding that the complain- 
ant could not stop the defendant from using his name as 
a trade-mark, anything to support the conclusion that the 
defendant is entitled to register that mark, and thereby 
stop others from using it and similar marks. The decision 
appears to be that the complainant had not a trade-mark 
rightwhich he could enforce against the defendant, and not 
that the defendant had a trade-mark right or other right 
of exclusive use. 

The decision of the Examiner of Interferences sustaining 
the demurrer and dismissing the notice of opposition is 
reversed. sSs ,.» 




COMMISSIONER'S DECISIONS. 



tzv 69,4. /<fVv 






Ex parte E. C. Atkins & Company. " r " ~ 

Decided May 23, 1900. 
Trade-Mark Application— Division— Practice. 

The question of division of an application for registration of 
a trade-mark will not be reviewed upon petition. It must be 
presented by appeal. 

On petition. 

trade-mark for tools for fitting and sharpening saws. 

Messrs. Bradford & Rood for the applicants. 
Allen , Commissioner: 

This is a petition from the action of the Examiner of 

Trade-Marks holding — 

, The applicant's goods as presented cover files and saw-sets, 
, Manifestly these*goods are not of the same descriptive properties 
.and cannot be included in a single application in the form pre- 
sented. 

I 

i The portion of the applicants' statement regarding the 
goods to which the mark is appropriated is: 

The class of merchandise to which the trade-mark is appro- 
priated is tools and cutting instruments, and the particular 
(description of goods comprised in said class upon which said 
trade-mark is used is tools for fitting and sharpening saws. 

The question raised by the Examiner is one of division; 
but the applicants' statement of goods is too indefinite to 
permit proper determination thereof. The specific tools 
upon which the mark has been used should be enumerated. 
Moreover, had the statement furnished been specific the 
question of division would not have been decided upon this 
petition, as that question is one of merits and must be pre- 
sented by appeal. M 

The petition is dismissed. ^ ^ 







COMMISSIONER'S DECISIONS. 



/ 2<£ 



Hawley and Hoops v. D. Atjerbach & Sons. ,' '" 

Decided May 30, 1906. iSgrg 

Trade-Mark Opposition— Notice of— Amendment. 

Where notice of opposition was filed within the thirty days 
allowed for that purpose and such notice alleges use of cer- 
tain marks by the opposer for several years, Held that an 
amended notice setting forth the specific dates determining 
the period which was referred to in the original notice may be 
filed though the thirty days allowed for filing the original 
notice haye passed. 

Appeal from Examiner of Interferences. ||P . 
trade-mark for candies, chocolates, and bohbons , 

Messrs. Knight Bros, for Hawley and Hoops. I 

Mr. Joseph L. Levy and Mr. Howard A. Coombs for D. 

Auerbach & Sons. _„, ^, 

Allen, Commissioner: 

This is an appeal by the applicant, D. Auerbach & Sons, 
frpm the order of the Examiner of Interferences granting 
the opposers, Hawley and Hoops, time within which to file 
an amended notice of opposition stating the date of adop- 
tion and use of the mark described by them. 

The contention of the appellant^ is that an amended no- 
tice of opposition stating dates of adoption and use of the 
trade-marks relied upon would constitute a new notice oi 
opposition and, as such , is prohibited in this case at this time 
by the provision of the statute that the ( notice of opposition 
shall be filed within thirty days after publication of the mark 
of thejapplicant in the Official Gazette. The original 
notice of opposition alleges use of certain marks by the op- 
poser "for many years." To furnish in an amended noJlce 
the specific dates determining the period which was re! 
to in the original notice as one of many years does not si 
the original ground of opposition or add a new ground 
thereto. 'The amendment in such case falls within the 
scope of the original notice. An amended notice under 
these circumstances does not amount to a new notice and 
is not prohibited by the provision of the statute requiring 
original notice to be filed within thirty days from the date 
of publication of the mark in the Official Gazette. 

The order of the Examiner is regarded as proper and is 
affirmed. ^ _, __ 



trAjtyt 



v / 




COMMISSIONER'S DECISIONS. 






COMMISSIONER'S DECISIONS. 



It-* 



0* 



J.&2- 



Bomiiaud p. United States Gbaphite Company. + 
Decided July 10, 1900. 
Trade-Mark Opposition-Return of Fee. 

Whfr notice of opposition was Bled and an mterferenre was 
declare 1 between the application of the opposer and the op- 
pose! application, Held th.a the opposition fee would not be 
returnc l. 

OX REQUEST. ■ 

TRADE-MARK FOR stovb-tolish. 

Mr Georgi W. CoVes for Bomhard. 

Mr. George B. WiUcox for United States Graphite Com- 
pany. "" 
Moore, Acting Commissioner: 

This is a request by Bomhard for withdrawal of his no- 
tice of opposition to the registration of a trade-mark by 
the United States Graphite Company. 

The notice of opposition was Bled June 4, 1906. The 
request forwithdrawal was Bled June 25, 1906. Thercason 
riven for withdrawal is that an interference has been 
declared between an application for registration by the 
opposer and the application of the United States Graphite 

Company. 

In requesting withdrawal of his notice of opposition the 

OPP"- . 

„ ,,,,;„ a that the fee paid for filing such notice of 

opposition will be returned. 

Il does not appearthat thefee paid in connection with the 
notice of opposition was a payment by actual mistake, in 
excess, or one not required by law, nor does it appear that 
the payment was caused by neglect or misinformation on 
the part of the Office. The. request for return of the fee, on 
the other hand, seems to be due to a mere change of pur- 
after payment, such as is the case where a party de- 
to withdraw his application for registration or to 
withdraw an appeal. In view of these facts and of the 
provisions of Rule 70 the fee cannot be returned. 

A-. the i'-r cannot be returned and as the request for 
withdrawal of the notice of opposition is made conditional 
upon the return of the fee, the notice of opposition stands 
unwithdrawn. ', • ,-, .j-j.^im^a^^" 



Ex parte Daws on, Halliwell & Company. T 

Decided July 31, 1906. 
Trade-Marks — Foreign Applicant — Registration Abroad 
for Different Goods. 
Where the applicant for registration of a trade-mark resides 
in a foreign country and the symbol which forms the mark has 
been registered by him in that country only as a trade-mark 
for diflerent goods from those for which the registration is 
sought in this country, Held that.the registration sought can- 
not be had in this country. 

On appeal. 

trade-mark for handkerchiefs, dress goods, sateens, etc. 

Mr. Joseph L. Levy and Mr. Howard A. Coombs for the 
appellants. .„ 

Moore, Acting Commissioner: ' 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing the trade-mark registration sought 
by the above-entitled applicants. 

The trade-mark is stated in the application to consist 
of the word "Excelda." The class of merchandise to 
which the mark is appropriated is stated there to be 
dry goods, and the particular description of goods upon 
which the mark is stated to have been used is handker- 
chiefs. The applicants are located in England. Section 4 
of the Trade-Mark Act provides, in part, that — 
* * * registration shall not be issued for any mark for regis- 
tration of which application has been filed by an applicant located 
in a foreign country until such mark has been actually registered 
by the applicant in the country in which he is located. 

To show that they are entitled to registration in ac- 
cordance with this provision of the law, the applicants 
have filed a certificate of registration in Great Britain 
of the word "Excelda" as a trade-mark in class 38 in 
respect to articles of clothing. 

The Examiner states that trade-marks for handker- 
chiefs are registered in Great Britain in classes 24, 25, 27, 
28, 31, and 32 of the British classification, according to 
the material of which they are made and to whether 
they are in the piece or not in the piece, and he states 
that in no single instance is a handkerchief classified in 
class 38, Articles of clothing. The reasons and authori- 
ties upon which these conclusions are based are given in 
his statement upon the appeal. No contention hy the 
applicants is found that these conclusions are in error, 
and they are therefore accepted here as correct without 
further consideration. The Examiner's position in re- 
fusing registration is that the same is sought in this 
country for handkerchiefs, whereas, so far as appears, the 
mark has not been registered by the applicants for these 
goods in the country in which they are located. 

The position taken by the Examiner is believed to be 
correct. There can be no federal trade-mark right in 
this country in a word or symbol separate from the goods 
upon which it has been used. The limitation of the ap- 
plication in this case to handkerchiefs as the goods upon 
which use has been had forms as essential a feature of 
the mark for which registration is sought as does the 
word "Excelda." This mark cannot properly be said 
to have been registered in a foreign country by a regis- 
tration of this word which does not cover the use of the 
same upon these goods. 

K The action of the Examiner of Trade-Marks refusing 
registration is affirmed. — u. 



'AKJCE 



Block Brothers Clothing CoMPANr.if'- 2 -' 



Decided June 16, ISOS, 

TrtLW-MARK— Descriptive. 

J The word ^Worthmore " refused registration as a trade-mart 
for shoes on the ground that it is descriptive. 

On appeal. -i i-4 M 

TRADE-MARK FOB SHOES. | ' 4, *S 

Mr. James J. Sheehy for the applicant. ' i§ :4 § i | i 
Allen, Commissioner: 

This is an appeal from the action of (the Examiner of 
Trade-Marks refusing to register the word "Worthmore" 
as a trade-mark for shoes. 

The Examiner's action was based npon the grou nd that 
the word is descriptive. It is clear that the words "worth 
more" are so naturally and obviously applicable to mer- 
chandise in the course of every-day business and ordinary 
advertising that they cannot be appropriated as a tech- 
nical trade-mark. The undoubted right of others to use 
the words "worth more" defeats the applicants' claim 
to trade-mark rights in their assemblage into the word 
"Worthmore." The joined words so closely resemble the 
separated words that they are practically one and the 
same therewith, so far as questions of trade-mark rights 
are concerned. 

The action of the Examiner of Trade-Marks is affirmed. 



£ 




Ex PARTE KenYON?\ 

/ ** Decided June, 15, 1906. 

/^bade-Mark— Descriptive. 

Hem that the words (^Catarrhal Jclly^ as a trade-mark fo^ 
medicinal preparations are descriptive, as before decided, (100* 
O. Gv, 2383)and that there is nothing in the present trade-mark " 
statute to Justify a different conclusion. 
On APPEAL. ' V' : • jap* 

TRADE-MARK FOR MEDICINAL PREPARATIONS. 

Messrs. Paid & Paxil for the applicant. 
Allen, Commissioner: •,"-'; . ■ —t~ 

This is an appeal from this action of the Examiner of 
Trade-Marks refusing to register the words "Catarrhal 
Jelly" as a trade-mark for medicinal preparations. 

The registrability of the mark was before me in ex parte 
Kenyan, (100 O. G., 2383,) where it was held that the same 
is descriptive in character and registration was refused. 
It is stated by the applicant that the question is again 
Presented in view of the amended trade-mark statute °and 
in view of additional reasons and authorities. Nothing 
is found in the present statute or in the arguments and 
authorities now presented justifying a different conclu- 
sion from that stated in my previous decision. It is be- 
lieved to be self-evident that any one dealing in remedies 
for catarrhal troubles should not be prohibited from ap- 
plying the word "catarrhal" thereto except under special 
circumstances not appearing in this case and that if the 
remedy was in the nature of a jelly such parties should be 
permitted to apply to their goods the term "catarrhal 
jelly ' as properly and naturally descriptive thereof 
The applicant in his statement alleges continuous use of 

^ T^ » m0re * han teD yeara P rior t0 the P^age of 
the Trade-Mark Act now in force. Since, however, there 
is no proper allegation of exclusive use of the mark through- 
out this time, the question whether the mark would be 
registrable under the so-called "ten-year" proviso of the 
Irade-Mark Act is not before me and is not decided 
i The decision of the Examiner of Trade-Marks isftffirmed; 



Herbst Importing Company. 

1906. 



1 



*F Ex PARTE S. C 

Decided June 11 
Trade-Mark— Anticipation. 

It Held that the words "Chancellor Club" as a trade-mark for 
cocktails would be confused in the mind of the purchasing pub- 
lic with the prior registered mark "Club Cocktails" for the 
1 same class of goods, and registration refused. 

On APPEAL. 

18 trade-mark for alcoholic liquors. • j 1 23 _r g 

Messrs. Bacon & Milans for the applicant. "'' 

Allen, Commissioner: 

This is an appeal from the action of the Examiner of 
Trade-Marks refusing to register the words "Chancellor 
Club " as a trade-mark for cocktails. 

The Examiner's action is based upon the registration 
by G. F. Heublein & Bro., No. 28,441, June 23, 1896, of 
the words "Club Cocktails" as a trade-mark for mixed 
drinks, and the decision in Heublein et al. v. Adams et al. 
(125 Fed. Rep., 782) is cited in support of his position. 

I agree with the Examiner that the words "Chancellor 
Club" as a mark for cocktails would be confused in the 
mind of the purchasing public with the prior registered 
mark "Club Cocktails" for the same goods. Sufficient 
reasons for this conclusion are set forth by Judge Colt in 
the decision above cited, holding "Club Cocktails" to be 
infringed by "Boston Club Cocktails." That decision 
does not depend exclusively upon grounds of unfair com- 
petition, as the applicant seems to contend. It is stated 
therein : 

Assuming, however, that the word was innocently adopted by 
the defendants, it still remains true that the effect of such adop- 
tion must be upon all the facts and circumstances disclosed in 
the proofs, to deceive the public and injure a rival manufacturer. 

Nor do I find any basis in the full opinion rendered in 
that case for the applicant's suggestion that the conclu- 
sion reached was due to the geographical significance of 
the word "Boston" in the defendants' mark. The real 
basis for the decision in that case, to my mind, is found 
in the following portion thereof: 

The word " Club " is a kind of catch-word by which these goods 
.are known in the trade and among consumers. * * * -aaaa 

This finding with regard to the mark of the complain- 
|ant (the registrant here) is undoubtedly correct and is 
sufficient to justify refusal of the registration sought by 
I the applicant. 
|£ The decision of the Examiner of Trade-Marks is affirmed. 



£// 



f 




,,19/ 



(PA 






COMMISSIONER'S DECISIONS. 



Ex PAB.TE HOYT BnOTHERS & COMPANY. 
Decided July Iff, 1906. 
BtADE-lfAMCs- Drawing. 

The trade-mark as shown by the drawing must conform 
strictrj to thai shown by tin* specimens in so Tarns the drawing 
purports to show that mark. 

On petition. 

trade-mark for machines for washing bottles. 

Mr. Willi, tin /•'. flail for the applicants. 
Moore, Aclinj Commissioner: 

This is a petition from the action of the Examiner of 
Trade-Marks requiring the word which constitutes the 
applicants' mark to lie shown upon the drawing in the 
same manner that it appears in (he specimens which have 
been furnished. 

A differs nt si vie of letter is used upon the drawing from 
that appearing on the specimens, and the letters are ar- 
ranged in a straight line upon the drawing, whereas upon 
the specimen the word is given a curved form.. The peti- 
tion is based upon the contention that these variations of 
the drawing from the specimen are of no consequence in 
law. It is not believed that the Office should be called 
upon to decide this question when the same can be avoided 
by causing the drawing to conform strictly to the mark as 
used in so far as it purports to show that mark. The prac- 
tice of requiring conformity to this extent is in general a. 
good one. Compliance therewith involves no hardship 
upon applicants, and no reason whatever is found why tho 
same should not be complied with in all cases and why all 
controversy over supposed exceptions should not be thus 
avoided. 

The applicants refer to the case of The Standard Under- 
ground Cahle Com puny, (123 O. G., 056;) but that decision. 
was made with reference to a different question from the 
one raised here. In that decision it was held that the 
drawing need not show all of the mark shown by the 
specimens; but the reasons given for that conclusion do 
not appear to extend to the case where the. parts of the. 
mark which the applicant has chosen to show upon his. 
drawing appear there in a different form from that in 
which the, appear upon the specimens, and it is not be- 
lieved that the decision should be construed to mean that 
such a variance in the drawing from the specimen should 
be permitted. 

The petition is denied. 



/2-^ 



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V 



Octcai.lt v. The New York Herald Compant.. 
Decided June 6, 1000. 

1. Trahe-Mark— Opposition. 

Whore the opposer made drawings to which he applied thc- 
words "Buster" and "Buster Brown" and sold them to. The' 
.\>w York Herald Company md the latter published thedraV- 

incs, Held that the opposition Bh< I not, be dismissed am 

demurrer, as the rights of the parties may depend upon: facte 
available for the purpose of such a decision, such tacts, for 
example, as the manner in which themark was applied by The 
New York Herald Company and the relations between the par- 
tlos at ths time the mark was adopted. 

2. Same— Same. 

The granting ol a preliminary injunction in the case of New 
Herald Company v. The Star (Company, Held not tp, 
p. vein tin. pre em ca e for the reason that the affidavits upon 
which that decision was based would not. even if properly in 
the record ol this case, form a proper basis tor dismissing the 
opposition. 

Appeal from Examiner of Interferences. 
IBADE-MARK FOB COMIC PUBLICATIONS, BOOKS, AND COMIC sec- 
tions OF NEWSPAPEBfi. 

Messrs. Mason, Fenwick & Lawrence for Outcault. 

Mr. William A. Mttjialh for Tin. Xew York Herald 
'ompany. 



- 
Allen, Commissioner: 

This is an appeal by Outcault from the decision of the 
Examiner of Interferences sustaining the demurrer olj^e 
New York Herald Company and dismissing the notice 

° f ThrNew n York Herald Company is an applicant for 
registration of the word "Buster" as a trade-mark for 
comic sections or pages of newspapers Outcault is an 
opposer, under section G of the Tradc-Mark Act of reg- 
istration to the applicant. The Examiner of Interfer- 
ences held, after consideration of affidavits, briefs, and 
oral arguments presented in connection with a demurrer 
by the applicant, that the opposer has not presented 
such a prima facie showing as to warrant continuation 
of proceedings. It is from that decision that the present 
appeal has been taken. 

I am of the opinion that the decision of the Examiner 
of Interferences is in error. It is alleged by Outcault 
that he created from week to week comic drawmgs hav- 
ing certain well-defined characteristics and that he ap- 
pHed such words as "Buster" and "Buster Brown 
thereto and sold them tojhe New York Herald Com- 
pany and that they were published in this company s 
newspaper and form the basis of its claim to registra- 
tion Outcault; makes, among others, the following con- 
tentions: first, that the use of the mark "Buster" in 
the newspaper of Jhe New York Herald Company was 
not as the title or mark of a newspaper or portion thereof, 
but as a title or mark for the pictures of definite charac- 
teristics which were published therein from the drawings 
furnished by him; second, that Jhe New York Herald 
Company has no right to the mark for pictures, because 
that right was acquired by him through his prior adop- 
tion of the mark upon the drawings. If these conten- 
tions are sound, it would seem that the application of 
the New York Herald Company should be rejected. 
^Whether they are sound depends upon facts which are | 
not available for the purposes of this decision. Such 
facts, for example, would be the manner in which, the 
mark was applied by the New York Herald Company 
in the successive editions of its paper and the relations 
between the New York Herald Company and Outcault at 
the time of adoption of the mark. I am satisfied that, 
so far as can be determined from the admission of Out- 
cault, it is possible that he may sustain, in the course of 
further proceedings, his opposition to registration by the 

applicant. 

In arriving at a contrary conclusion the Examiner of 
Interferences referred to the recent decision of Judge 
Lacombe in the case of The New YorTc Herald Company 
v. The Star Company, granting an injunction pendente 
, lite to restrain The Star Company from issuing the trade- 
mark "Buster Brown" as a title or heading for comic 
sections of newspapers. In that decision (which has been 
sustained upon appeal) it is stated: 

It is not disputed, it could not be seriously disputed under 
the authorities, that the title of a publication may become a 
trade-mark Who 'was the test peso,, to invent the name or 
surest its use in sonic other connection is not material, the 
qufftion is ■'Who first used it as the title of a comic section of 
a newspaper?" 

****** 
A comic section may consist of a single page as well as of four 
■pages?" may be a subsection of a larger section also comic, but 
is none the less a "section." 

and it was found to be, positively and clearly shown by 
affidavits that the New York Herald Company was the 
first, to use the mark in question as the title of a comic 
section of a newspaper. The affidavits referred to by 
Judge Lacombe would not form a proper basis for a final 
decision here, dismissing the notice of opposition, even if 
they were properly in this case. The Examiner of Inter- 
ferences found in Outcault's affidavit, in this proceeding 
an admission that the New York Herald Company had 
'used the mark as the title of a comic section of a news- 
paper. 1 do not find that such an admission is made. 
The publication in the applicant's newspaper of drawings 
to which a certain mark had been applied, which is ad- 
mill,., I, does nni establish that the mark was used as a 
title for the paper or any portion thereof so as to estab- 
lish a righl thereto, notwithstanding any right which 
might 1 rred by others to the mark for the 

pictui 

ion of the Examiner of Interferences is re- 
versed. 



James Buchanan & Co., JjpO., v. Frederick R. West's 
Nephews. 
' Decided A ugust SI, 1906. 

Trade-Mar ^-Opposition— Demurrer. 

Where on appeal from the refusal of the Examiner of Trade- 
Marks to register the words "Black and Blue." as a trade-mark 
for Scotch whisky by reason of the previous registration of the 
words "Black and White" for the same class of goods it was 
decided that the resemblance between these marks was not such 
as to preclude registration of the words "Black and Blue," end 
the owJur of the mark "Black and White" then filed a notice of 
opposition to the registration of the words "Black and Blue." to 
which the applicant demurred on the ground that there was no 
such resemblance between the marks as to preclude registration 
of his mark, Held that the decision on the ex parte appeal is not 
binding in the disposition of the demurrer in the inter partes pro- 
ceeding, for the reason that on the ex parte appeal it was neces- 
sary to decide the question at issue without the assistance of 
testimony, while on the demurrer a different question is raised— 
viz., whether the testimony of witnesses should be received as a 
guide in determining whether the marks of the respective parties 
bear such a resemblance as to cause confusion in the mind of the 
public or deceive purchasers. 
Appeal from Examiner of Interferences. 

TRADE-MARK FOR SCOTCH WHISKY. 

Messrs. Wise & Lichtenslein for James Buchanan & Co., 
Ltd. 

Mr. A. Parlcer Smith for Frederick R. West's Nephews. 
Moore, Acting Commissioner: 

This is an appeal from the decision of the Examiner of 
Interferences sustaining the demurrer of the applicants, 
Frederick R. West's Nephews, to the notice of opposition 
of James Buchanan & Co., L imited. 

The applicants' trade -mark consists of the words 
"Black & Blue" printed along the diagonal line of divi- 
sion between a black portion and a blue portion of a rec- 
tangular label. Upon the publication of this mark in the 
Official Gazette James Buchanan & Co., Ltd., who 
have registered as a trade-mark the phrase "Black and 
White," filed their notice of opposition. The parties use 
their respective marks upon Scotch whisky. At the re- 
quest of the Examiner of Trade-Marks the opposition pro- 
ceedings were suspended for the purpose of rejecting the 
applicants upon the opponent's registration of the words 
"Black and White." The applicants thereupon appealed 
to the Commissioner, who reversed the Examiner of 
Trade-Marks and held that the marks did not resemble 
each other so closely as to be liable to cause confusion or 
mistake in the mind of the public or deceive purchasers. 
The opposition proceedings were then resumed, and a 
hearing was had upon the demurrer which had previously 
been filed by the applicants and in support of which it was 
contended that there was no such resemblance between 
the opponent's mark "Black and White" and the mark 
"Blackj fc Bl ue" as to preclude, the registration of the. lat- 
ter. The Examiner of Interferences sustained the demurrer. 

Ths question presented by this appeal is not identical 
with that considered by the Commissioner in disposing of 
the ex -parte appeal from the refusal of the Examiner of 
Trade-Marks to register the words "Blac k &. B lue" in 
view Gf the prior registration of the words "Black and 
White." Upon the ex parte appeal the question pre- 
sented was whether, in the absence of other evidence, the 
marks themselves could be considered as bearing such 
resemblance that their concurrent use by different parties 
would cause confusion or mistake in the public mind or 
deceive purchasers. In the ex parte proceeding there was. 
no possibility of securing evidence on this point. The 
question now to be determined is whether evidence regard- 
ing the attitude of the public toward the marks involved 
would have weight in reaching a conclusion as to the likeli- 
hood of the resemblance between the two marks being suchl 
as to cause confusion in the public mind and whether in| 
an inter partes proceeding, where such evidence can be ob- 
tained, it would be proper to refuse to receive testimony I 
and dispose of the case on demurrer. The fact that the I 
question of the similarity of the marks involved in this 
proceeding was once passed upoD in an ex parte proceeding, 
where the testimony of wiv-v^to could not be oecured, 
docs not exclude the possibility that sucYi to=Umony might 
have weight and should be admitted in a case where it can 
be obtained. 



The courts liav : in some cases passed upon the question 
of infringement in trade-mark cases upon demurrer, and 
in other cases they have reserved this question for con- 
sideration after the introduction of testimony. (Collins 
Chemical -& Mfg. Co. v. Capital City Mfg. Co., 42 F. R., 
64; Leidersdorf v. Flint, 7 N. W., 252.) I am of the 
opinion that the present case is one in which the opponent 
should be permitted to present testimony, if it so desires. 

The decision of the Examiner of Interferences is re- 
versed. 



/?. 



I 




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Ex parte Joseph 15. Funke Company. • ^ 

Decided July 19. 190G. ,t * 1 

Tbade-Habx Application— Declaration— Exclusive I'se. 

A statement that the mark has been in exclusive use for ton 

years next preceding February 20, 1005, when i the Trade-Murk 

Act whs approved, is not sufficient to bring the case under the 

ten-year proviso of the net. as the ten years referred to are 

those preceding April 1. 1905, when the act went into effect. 

| Ox PETITION. ™* ( , t 

J- 'TRADE-MARK FOR CHOCOLATE CREAMS, ETC. 

Mr. George Welmoie Colles for the applicant. "^ 

Allen . ( 'timm issioner: 

This is a petition from the action of tlic Examiner of 
Trade-Marks objecting to the declaration forming part of 
an application for registration of a trade-mark. 

Tlic application purports to be one under the ten-year 
proviso included in section 5 of the Trade-Mark Act. In 
attempting to set forth the actual and exclusive use re- 
ferred to in this proviso the applicant in its declaration 
has stated that such use has existed — ^ 

lorthe ten y s next preceding February 2f), 1005. 

It is to this statement that objection has been madefy 
the Examiner. lie calls attention to the provision of the 
statute that the actual and exclusive use shall have been — ■ 
lor ten years next preceding the passage of this act, (section Al- 
and also to Rule[30, requiring a declaration, and to Farm 8 
for a declaration, which follow the statute in stating that 
the use of the mark shall have been for the ten years 
preceding the passage of the act. The act was approved 
February 20. 1905, and went into effect upon April 1, 
1905. The question is whether the statement that there 
was actual and exclusive use for ten years prior to the/ 
date of approval meets the provision of the statute that 
there shall have been such use for ten years preceding the 
date of passage. 

; Except for a technical construction ofi the-AWwlds "next 
preceding the passage of this act'' as used in the. statute 
the two expressions would mean the same thing and 
there would probably be no necessity for objecting to 
the applicant's departure from the wording of the rules 
and forms; but the expression "passage of the act" as 
usually construed when used to (ix a date in a statute 
which goes into effect upon a different date from that 
upon which it is enacted or approved refers to the going 
into effect of the act and not to its approval. That this 
is true is sufficiently indicated for the purposes of this 
decision by the following cases: Thompson v. Independent 
School Districts, etc., (70 N. W. Rep., 1093, and the cases 
cited therein:) Harding v. People, (15 Pac, 727, see syl- 
labus in 44 American Digest, (Cent, edition,) 2911, p. 
336 (g):) Patrick v. Perryman, (52 111. App., 514, see syl- 
labus in 44 American Digest, (Cent, edition,) .291 1, p. 
336 (k):) Harding v. People, (10 Colo., 387; 15 Pac. Rep., 
727:) State v. tfemig, (45 Neb., 724; 64 N. W. Rep., 348J) 
The usual rule of construction should be followed in the. 
present case unless there is some reason for departure 
therefrom. Xo such reason is found. On the other bund, 
it has been found necessary to construe the words "the 
1 i nit- of passage of this act " in section 24 of the same act 
to mean the time when the act went into effect in order 
to carry out the undoubted intention of the law that 
applications (iled after February 20, 1905, and before 
April 1, 1905, might be amended to bring them under 
the" provisions of the act. A construction of terms found 
necessary in one section of an act should obviously be 
adopted in construing the same or equivalent terms iu 
another section of the same act where no good reason 
appear why a different construction should be adopted. 

Jt is believed to be clear from the preceding discussion 
that the language used in the declaration in this case 
must cover actual and exclusive use of the mark by the. 
applicant for the period of ten years next preceding April 
1, 1900. As the present declaration does not cover the 
period between February 20, 1905, and April 1 of the 
same year in the matter of actual and exclusive use. it 

i ilflicietit. 



Wof.'-ester Brewing Corporation v. Rueter & Com- 
pany. 

Bedded July SI, 1906. 

1. Trade-Mark Interference— Evidence— Irrelevant Ex- 

hibit. 
An exhibit consisting of an opinion of counsel given prior to 
the proceeding that the mark in issue would not infringe a cer- 
tain registration is irrelevant and incompetent and should be 
struck from the record. 

2. Same— Same— Proper Rebuttal. 

An exhibit of a State registration by the applicants which 
included the word now in issue and a statement that this word 
was not essential to the mark there registered is proper rebuttal 
evidence for the opposcr where the applicants asserted the 
mark so registered as evidence of their right to register the 
mark in. issuci 
Appeal on motion. I - '• 

TRADE-MARK FOR AJiE. 

Messrs. South-gate & Southgate- for Worcester Brewing 
Corporation. 

Mr. George H. Maxwell for Rueter & Company. 

Allen, Commissioner: 

This is an appeal by Rueter & Company from the de- 
cision of the Examiner of Interferences denying their 
motion that the rebuttal testimony of the Worcester 
Brewing Corporation and the exhibits introduced there- 
with be struck out. 

Rueter & Company are applicants for registration of 
the word "Sterling" as a trade-mark for ale. The Worces- 
ter Brewing Corporation opposes such registration. Both 
parties have taken testimony. Rueter & Company intro- 
duced evidence of the use by them of a so-called "Offi- 
cial Sign." This "Official Sign" is a fanciful design bear- • 
ing inscriptions, among which is "Sterling Ale." The 
testimony and two exhibits introduced by the Worces- 
ter Brewing Corporation as its case in rebuttal and 
which Rueter & Company urge should be struck out are 
claimed by the Worcester Brewing Corporation to relate 
to the "Official Sign." One of these exhibits, "Rueter & . 
Company's Registered Trade-Mark," is a certified copy 
of a registration by Rueter & Company with the Com-, 
monwealth of Massachusetts of what appears to be the. 
" Official Sign " as a trade-mark for ale. The other exhibit, 
"Opinion of Counsel," is a written opinion by the attor- 
neys for the Worcester Brewing Corporation, dated long 
prior to the institution of the present proceeding, to the 
effect that the aforesaid registration of Rueter & Com- 
pany with the Commonwealth of Massachusetts would 
not be infringed by others using the word "Sterling" in 
connection with ale. 

The exhibit "Opinion of Counsel" seems to be wholly 
irrelevant and incompetent. Objection was duly made 
to the same upon that ground, and the motion that it be 
struck out should be granted. The exhibit "Rueter & 
Company's Registered Trade-Mark" is not subject to the 
same objections and is proper rebuttal evidence. In t .o 
sworn declaration forming part of that registration it is 
stated that the design shown — 

mav be encircled bv a rim or border bearing "Rueter and Com- 
pariy. Highland Spring Brewery, Boston," and other words but 
this is not essential. 

Since the word "Sterling" is one of " the other words " 
appearing upon the registered design, it would seem now 
that this is evidence which should be considered as properly 
responsive in character to Rueter & Company's assertion 
of their "Official Sign" as evidence of their right to regis-: 
tration of the mark in issue. 

Questions 1,2, 3, and 4, pages 61 and 62 of the Worces- 
ter Brewing Corporation's record, and their answers, ex- 
cept all of the answer to question 4 following the word 
"one" in line 3 thereof, are not objectionable, and the. de- 
cision of the Examiner of Interferences refusing to strike 
out the same and the exhibit "Rueter & Company's 
Registered Trade-Mark" is affirmed. 

The remaining questions and answers, pages 62-65 of the 
same record, relate to the exhibit "Opinion of Counsel" 
and are improper. The decision of the Examiner of In- 
terferences refusing to strike out this portion of the depo- 
cinnt, . -... i ihn exhibit "Opinion of Counsel" is reversed- 





additionaTobjection to the applicant's dec ahtirin i 
made by the Examiner in his statement upon the peti- 
tion which does not appear to have been previously raised 
jn the case. An argument in response theretc has been 
submitted in the applicant's brief. The practice of rais- 
ing objections for the first time in the statement upon 
petition is not approved. To entertain such objections 
upon the petition where argument is made by the appli- 
cant in opposition to them would impose upon the Com- 
missioner labor which should be performed as far as pos- 
sible bj- the Examiner. The additional objection will not 
he considered upon this petition. 
The petition is denied. 



/r?\ 



/zs- % 



6?6>y 



The Wolf Brothers and Company v. Hamilton Brown 
Shoe Company. 
Decided July 27, 190B. *V> 

1. Trade-Marks— Priority— Title— Oral Transfer. 

Held that in determining the question of priority of adoption 
and use of a trade-mark a verbal transfer of trade-mark rights 
should be regarded as effective and valid and capable of proof 
by testimony to the fact or to other facts which support an 
inference of sufficient strength that such transfer was made. 

2. Same— Same— Same— Same. 

Section 10 of the Trade-Mark Act providing that assignment 
of every registered trade-mark and every mark for the registra- 
tion of which application has been made must be by an instru- 
ment in writing does not prevent a party from proving deriva- 
tion of the mark from predecessors in an oral transfer of busi- 
ness where the mark was not registered and no application for 
registration had been made. 

3. Same— Opposition— Injchy. 

Where the mark of the applicant is so similar to that of tho 
opposer as to be likely to cause confusion, probable injury to 
opposer will be presumed. 

4. Same— Similarity— " American Lady" and "American 

Girl." 
"American Lady " is sufficiently similar to the mark "Ameri- 
can Girl" to make registration thereof by the applicant im- 
proper in view of the opposer's ownership of the latter mark. 

5. Same— Same— Finding Independent op Testimony. 

A finding that two marks are similar may be based upon con- 
templation of the marks aside from the testimony upon the- 
question of actual confusion. (LoriVard Company v. Peper, 
86 Fed. Hep., 950.) 

Appeal from Examiner of Interferences. 
trade-mark for women's high and low cut leather shoes. 

Mr. John E. Jones and Messrs. Merrick & Herrick for 
The Wolf Brothers and Company. 

Messrs. Bakewell & Cornwall for Hamilton Brown Shoe 
Company. 
Allen, Commissioner: 

This is an appeal from the decision of the Examiner 
of Interferences sustaining the opposition of The Wolf 
Brothers and Company to registration by the Hamilton 
Brown Shoe Company of the words "American Lady" as 
a trade-mark for shoes. 



The notice of opposition alleges ownership by The Wolf 
Brothers and Company of the trade-mark "American 
Girl" for shoes. It is also alleged therein that The Wolf 
Brothers and Company, will be damaged through regis- 
tration by the Hamilton Brown Shoe Company of "Ameri- 
can Lady" as a trade-mark. for shoes by reason of con- 
fusion and deception arising .from similarity of the two 
marks. The Hamilton Brown Shoe Company in its 
answer denied that The Wolf Brothers and Company 
owned the trade-mark ''American Girl" for shoes, or that 
they would be damaged through registration by the 
Hamilton Brown Shoe Company of the mark "American 
Lady" for shoes, or that there is such similarity between 
the marks "American Girl" and "American Lady" as 
would cause confusion or deception among purchasers. 
The Wolf Brothers and Company have taken testimony 
in support of the allegations made in its notice of oppo- 
sition. No testimony was taken by the Hamilton Brown 
Shoe Company. The Examiner of Interferences found 
from the testimopy that the words "American Girl" had 
been in continuous use as a trade-mark for shoes by The 
Wolf Brothers and Company and their predecessors from 
whom they derived title since the years 1896 or 189,7, 
which is long prior to any date of use of the words "Ameri- 
can Lady" claimed by the Hamilton Brown Shoe Com- 
pany. The Examiner of Interferences also found that 
the testimony showed confusion in the minds of pur- 
chasers between the terms "American Girl" and "Ameri- 
can Lady" arising from their similarity. He held that, 
in view of these findings, the opposition should be sus- 
tained. 

Consideration of the arguments of the Hamilton Brown 
Shoe Company discloses no error in the findings of the 
Examiner of Interferences, and his conclusion that the 
opposition should be sustained is believed to be correct. 

THE WOLF BROTHERS AND COMPANY'S OWNERSHIP OF THE, 
Jgi MARK "AMERICAN GIRL." 

The Hamilton Brown Shoe Company filed their apph> 
cation for registration of "American Lady" upon May 5, 
1905. They allege therein use of this mark since the year 
1900. It appears from the evidence produced by The 
Wolf Brothers and Company that the Hamilton Brown 
Shoe Company was using this mark in that year, (Rec, 
Appendices D, E, and F, pp. 55-57;) but there is no evi- 
dence of earlier use of the mark by the latter company. 
It is testified that the mark "American Girl" was adopted 
in the year 1896 by the firm of George F. Dana & Com^ 
pany, that later in the same year the Dana-Lytle Shoe 
Company succeeded to the business of George F. Dana & 
Company, that the Dana-Lytle Shoe Company was fol- 
lowed by a series of successors, the last of which are The 
Wolf Brothers and Company, and that the mark "Ameri- 
can Girl" was continuously used in the business of these 
firms and corporations from the date of its adoption by 
George F. Dana & Company in 1896 to the present time. 
The Hamilton Brown Shoe Company contends that this 
testimony is insufficient to establish ownership of the 
mark "American Girl" by The Wolf Brothers and Com- 
pany for two reasons: first, that there is no proper evi- 
dence of transfer of the trade-mark rights of George F. 
Dana & Company to the Dana-Lytle Shoe Company, 
and, second, that the proofs concerning adoption and use 
of the mark by George F. Dana & Company and the 
proofs concerning derivation of title from that company 
are not entitled to consideration by reason of the failure 
of the notice of opposition to allege adoption and use by 
that company and derivation therefrom. 



/?*- 









2H 



The alleged defect in the evidence of transfer of title by 
the George F. Dana to the Dana-Lytle Shoe Company 
resides in the failure to show that such transfer was made 
in writing. The position of the Hamilton Brown Shoe 
Company upon this point is not well taken. No reason 
is perceived why in a case of this kind a verbal transfer of 
trade-mark rights should not be regarded as effective and 
valid and be capable of proof by testimony to the fact or 
to other facts which support an inference of sufficient 
strength that such transfer was made. There is no ques- 
tion in this case of the rights of a subsequent purchaser, 
nor is there any question of the fact of sale by a party de- 
nying the same. It is in such cases that the reasons for 
requiring an instrument in writing apply. Thoy are be- 
lieved to have no application to the present case. Section 
10 of the Trade-Mark Act is referred to by the Hamilton 
Brown Shoe Company, providing that the assignment of 
"every registered trade-mark and of every mark for the 
registration of which application has been made * * * 
must be by an instrument in writing." To construe this 
provision of the law as applicable to the present case 
would, in my opinion, be unreasonable, even if the terms 
of the same permitted such application, which they do 
not. This section is expressly limited to trade-marks 
which have been registered or upon which application for 
registration has been made. It does not appear that the 
marks involved in the case met either of these conditions 
when the Dana-Lytle Shoe Company succeeded to the 
business of George F. Dana & Company. The proof of 
derivation of title is regarded as fully sufficient for the 
purposes of this ease. 

The contention that the proofs regarding George F. 
Dana & Company and derivation of title by the Dana- 
Lytle Shoe Company from that company are beyond the 
allegations made in the pleadings is also of no assistance 
to the case of the Hamilton Brown Shoe Company. 
These proofs will not be given force and effect for one pur- 
pose and not for another. If accepted, they carry the 
title of The Wolf Brothers and Company back to the 
adoption of the mark by George F. Dana & Company in 
1896. If rejected, their title goes back to the use of the 
mark by the Dana-Lytle Company later in the same year. 

SIMILARITY OF THE MARKS "AMERICAN GIRL" AND "AMERI- 
CAN LADY." 

The only remaining question is that of the similarity of 
the marks. The Hamilton Brown Shoe Company con- 
tends on various grounds that The Wolf Brothers and 
Company have not been injured and that there is no prob- 
ability that they will be injured should its application 
for registration bo granted. It is not necessary to con- 
sider the question of injury here further than to deter- 
mine whether the mark "American Lady" is so similar to 
the mark "American Girl" as to be likely to cause con- 
fusion or mistake in the mind of the public or to deceive 
purchasers. If the marks are found to be so similar as to 
be likely to lead to such confusion and mistake, probable 
injury to The Wolf Brothers and Company will be pre- 
sumed. 



The Wolf Brothers and Company have taken the testi- 
mony of several witnesses for the purpose of showing con- 
fusion in the trade and among purchasers of their "Ameri- 
can Girl" shoe with the "American Lady" shoe of the 
Hamilton Brown Shoe Company. This testimony is 
strongly attacked by the Hamilton Brown Shoe Company 
on the ground that it is hearsay and that it does not set 
forth specific instances in such manner as to afford oppor- 
tunity to it for investigation and rebuttal. The criticism 
of the decision of the Examiner of Interferences by the 
Hamilton Brown Shoe Company in regard to the subject 
of hearsay testimony is unwarranted. Some of the testi- 
mony of The Wolf Brothers and Company's witnesses upon 
the subject of confusion of the marks was hearsay; but 
that quoted in the decision of the Examiner of Interfer- 
ences is not subject to this objection. It is, as stated in 
the Examiner's decision, proper evidence under the well- 
known exception of the hearsay ride admitting statements 
which form a portion of the res gestae. The testimony 
upon the question of confusion of the marks has been 
carefully reviewed and is found to be of considerable pro- 
bative force. I am of the opinion that the mark "Ameri- 
can Lady" is sufficiently similar to the mark "American 
Girl" to make registration thereof by the applicant im- 
proper in view of The Wolf Brothers and Company's 
ownership of the latter mark. In reaching this conclu- 
sion I am guided as much by the obvious proximity of the 
marks in meaning as by the testimony which has been 
adduced to show actual confusion. The word "girl" in 
the term "American Girl" as the same is ordinarily U3ed 
is not restricted in meaning to a child; nor is the word 
"lady" as used in the advertisement of shoes believed to 
convey ordinarily any other meaning than that of the 
word "woman." "American Girl" and "American 
Lady" are believed, therefore, to have substantially the 
same significance when used as trade-marks for shoes. 
These expressions are, to my mind, closer than the follow- 
ing sets of expressions, in each of which the courts have 
found an infringement: "Willoughby Lake" by "Wil- 
loughby Ridge," (-4. F. Pilce Manufacturing Company v. 
Cleveland Stone Company, 35 Fed. Rep., 896;) "Canadian 
Club Whiskey" by "Canadian Rye Whiskey," {Tliram 
Wall-er & Sons v. Mikolas, 79 Fed. Rep., 955;) "Gold 
Dust" by "Gold Drop," (A r . K. Fairbanks Company vv i 
Luckel, King etc. Soap Company, 102 Fed. Rep., 327.) ) J ' 

Apropos of the finding herein made of similarity of 
marks from contemplation thereof asido from the testi- 
mony to actual confusion is the following statement of 
Mr. Justice Brewer in the case of LoriUard Company v. I 
Peper, (86 Fed. Rep., 959 and 960,) holding marks dis- ' 
similar, notwithstanding testimony which taken alone 
might have led to a different conclusion: 

We cannot surrender our own judgment in this matter because 
others may be of a different opinion, or because it happens, in 
isolated instances, that some purchaser was so careless as not to 
■detect the differences. 

Th e decision of^the Examiner of Interferences sustain- 
ing the opposition is affirmed. 










/3L/t e?.^t, &?0i. 

OOMMISSIONEE'S DECISIONS. 



Ex parte Strong & Garfield Company. 

Decided September 1, 1906. 
Tpade-Marks— Class op Merchandise Eequired by Act of 
May 4, 1906. 
Section 1 of the Trade-Mark Act of May 4, 1906, construed to 
mean that the class ol merchandise specified in the application ^» 
for the registration of a trade-mark shall be one of the classes of 
merchandise established by the Commissioner under section T^ 
of said act. 

On petition. 

trade-mark for leather boots and shoes. 

Mr. T. Hart Anderson for the applicant. 
Moore, Acting Commissioner: r 33."^- 

This is a petition from the requirement of the Exam in er 
of Trade-Marks that applicant set forth the class of mer- 
chandise upon which the trade-mark has been usSd by the 
official title "Class 36, Leather and leather manufactures 
not otherwise classified." 

As filed the application stated the class of merchandise 
to which the trade-mark is [appropriated as "footwear,", 
and the particular description of goods upon which it is 
used as "leather boots and shoes." After the passage of 
the act of May 4, 1906, the Examiner of Trade-Marks re- 
quired that the statement of the class of merchandise be 
changed from " footwear" to "Class 36, Leather and 
leather manufactures not otherwise classified." Instead 
of complying with this requirement applicant changed the 
statement of the class of merchandise to read " boots and 
shoes." Upon a repetition of the requirement by the Ex- 
aminer applicant refused to make the change and brought 
this petition. 

The contention of the petitioner is that there is no a u- 
thority in law for the requirement of the Examiner that 
applicant adopt the title of some one of the various classes . 
of merchandise established by the Commissioner under th e 
act of May 4, 1906; but it insists that an applicant should 
be free to choose the title of the class of merchandise which 
he desires to adopt. The petitioner admits that section 1 
of the act of May 4, 1906, requires that the applicant shall 
specify— 

* * * the class of merchandise and the particular description of 
goods comprised in such class to which the trade-mark is appro- 
priated, 

and that section 2 of said act requires — - 

That ithe Commissioner of Patents shall establish classes of 
merchandise for the purpose of trade-mark registration. 

It contends, however, that there is nothing in either sec- 
tion of the statute which requires that an applicant desig- 
nate his class of merchandise by the official title of a class 
established by the Commissioner of Patents. 

In this interpretation of the statute it is believed that 
the petitioner is in error. Section 2 of the act of May 4, 
1906, in full is as follows: 

Sec. 2. That the Commissioner of Patents shall establish classes 
of merchandise for the purpose of trade-mark registration, and 
shall determine the particular descriptions of goods comprised in 
each class. On a single application for registration of a trade- 
mark the trade-mark may be registered at the option of the ap- 
plicant for any or all goods upon which the mark has actually , 
been used comprised in a single class of merchandise, provided \ 
the particular descriptoins of goods be stated. 

By the term "single class of merchandise " in the second • 
sentenc? of section 2 is clearly meant one of the "classes 
of merchandise" that the Commissioner is directed to es- ( 
tablish in the first sentence of section 2, and it is thought 
tp be likewise the intention that the " class of merchandise'' 
of section 1 shall be one' of the "classes of merchandise" 
established by the Commissioner under section 2. More- 
over, the presumption of law is that the meaning of a word'.; 
repeatedly used in a statute is identical in all places unless 
there is something to show that another meaning is in- 
tended. {Am. & Eng. Eneyd. of Law, vol. 26, p. 610.1 



th?.r^rr nBe 5B5h * ° f coDgres9 k^&m 2 of 

905 to d ^ 1 19 f ' ameDdiDg ^ aCt ° f Feh ™ry 20 
190o, to define the clause "class of merchandise and the 

SI ^ ' rad r mark * appropriated" occurring in sec- 
tion 1 of the above-mentioned acts. In accordance with 

2LE ons ? thk seotion seventy - two classes of -- 

chandise have been established. These comprise the offi- 

his Office. Any or all goods comprised in one of these 
cWs upon which the mark has been actually used may 
be aimed m a single application. The result of this das- 
smcatzon is to extend greatly the variety of goods that 
my be claimed in one application and to permit a single 

S Z em , braCe g ° 0ds ° f differont descri P^ P'op- 
er tie . This uniform classification is obviously in the in- 
terest of applicants as well as a matter of Office conven- 

AppKcant has specified the particular description of 
good, upon which it has used the mark as "leather boots 
and shoes," and this is all the registration will cover. No 

tS heS lTT A * thh Sfcfe " ™*ther the 
clas, within which thes 3 goods are comprised is entitled 

boots andshoes-or-aossSG.I.atherandlcathermanu- 
factures not otherwise classified" does not appear to be of 
^y consequent to petitioner.. Had it used its" mark «f , 
leather ^oocb other than boots and shoes, however, the ' 
offiexa classification would be in its interest, since it would 
peimitthaapphcant to cover them also in one registration 
^ -Ue petition is denied. 



77 

COMMISSIONERS DEOi'SIONS. 




Ex parte United States Brewinc Company 

Decided October 12, 1906. 

1. Trade-Marks— The Word "Savoy" Geogr^ jhical. 

The word " Savoy" is primarily geographical in significance, 
and is therefore not registrable. 

2. Same— Particular or Distinctive Manner op Printing. 

Wliere it is contended that the word "Savoy" as a family 
name is registrable because printed in script on a diagonal line 
with the letters shaded and with a paraph under the word, Held 
not to bo printed in such a particular'or distinctive m anner as to 
entitle it to registration. 

On appeal. 

trade-mark for beer. 

Messrs. Dudley, Browne & Phelps for the appellant. 
Moore, Acting Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register a trade-mark for beer 
which consists of the word " Savoy" written in the pecul- 
iar and distinctive form shown in the accompanying 
drawing." 

According to the Cenluary Dictionary the term "Savoy," 
French "Savoie," indicates a former duchy, now divided 
into the departments of Savoie and Haute-Savoie in 
France, and the "House of Savoy" is the name of a royal 
family of Europe, now the reigning house of the kingdom 
of Italy. Mention is also made of the Savoy Chapel and 
the Savoy Theater in London. 

The word "Savoy" is therefore both a geographical 
term and a family name. It appears to be primarily 
geographical in significance, and is therefore not regis- 
trable. (Sect. 5 of Trade-Mark Act of February 20, 1905.) 
Moreover, disregarding the geographical significance, as 
a family name it could be registered under the provisions 
of section 5 of the Trade-Mark Act only in case the word is 
"written, printed, impressed or woven in some particular, 
or distinctive manner or in association with a portrait of 
the individual." Applicant contends that the word is 
printed in such a particular and distinctive manner as to 
entitle it to registration. This contention is believed to 
be erroneous. The word is printed by applicant in script 
on a diagonal line, the letters are shaded, so as to appear in 
perspective, and there is a paraph under the word. 

Printing in script is an ordinary form of printing, while 
the manner or arrangement of the printed matter used by 
applicant is not uncommon. In the case of ex parte 
Featherstone & Company, (86 O. G.,1497,) where the name 
" Featherstone " was printed in script letters [in a diagonal 
line and with a forwardly-extending understroke or flour- 
ish, the Commissioner held: 

The name of an applicant does not. in my opinion, cease to be 
merely the at rpllcunt because it is in script letters and 

disposed diagonally. It is an at* m|.t to appropriate that which 
illy bo appri prial id against others of the samo name. 
ilarity of f rotation" the name ot 
an applicant regi ile, but the peculiarities im- 

parted to it must bo som thing beyond printing it in script type 
and in-a style quite common. 

While the above decision was rendered under the act of 
March 3, 1881, the act of February 20, 1905, does not ap- 
pear to require that the name be printed in a manner any 
less particular or distinctive in order to be entitled to reg- 
istration. 

The registration was properly refused by the Examiner 
on the ground that the term is geograplucal and also be- 
cause as a family name it is not printed in a particular or 
distinctive manner. The decision below is affirmed. 




COMMISSIONERS DECISIONS.' 
Ex parte Hopkins'. 

Decided October IS, 1906. 
Srade-Marks-The Word "Oriental" Geographic in SiGJUr 
ficance. 
A mark having as the predominating feature the words 
" Oriental Cream " is not registrable, since the word " Oriental" 
is geographical in significance. 

On appeal. 

trade-mark for skin-lotion. 

Mr. Joseph L. AtUns for the appellant. 
Moore, Acting Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks refusing to register a trade-mark for a skin , 
lotion which consists of the words "Oriental Cream" as- 
sociated with a "fantastic winged figure." 

The "fantastic winged figure" is small and indistinct. 
In one of his amendments applicant indicates that it is in- 
tended to represent " an eagle holding a scroll in its beak." 
However, the figure is relatively so small as to leave thq 
words "Oriental Cream" the predominating feature of the 
mark. 

The Orient is a term used to indicate the East, eastern 
countries, and specifically the regions to the east and 
southeast of the leading States of Europe. (.Century Dic- 
tionary.) The term "Oriental" is in general use in com- 
^merce to indicate goods that are manufactured in this re- 
gion—as, for example, oriental rugs. As applied to a 
cream it would indicate that the cream came from the 
Orient. 

The registration of appellant's mark must be refused in 
view of section 5 of the Trade-Mark Act of February 20, 
1905, which provides that no mark consisting merely in 
"a geographical name or term shall be registered under 
the terms of this act," and of the decisions of the courts 
holding such terms as "Lackawanna" in connection with 
the word "Coal," (Delaware & H. Canal Co. v. ClarJc, 13 
Wall., 311;) "Columbia^ (Columbia Mill Co. v. Alcorn, 
150 U. S., 460); "Old Country" and "Our Country," (Al- 
len B. Wrisley Co. v. Iowa Soap Co., 122 Fed. Rep., 796,) 
and "East Indian" in connection with "Remedy" (Con- 
nell v. Reed, 128 Mass., 477) to be geographical and not 
capable of appropriation as trade-marks. 
The decision of the Examiner of Trade-Marks is affirmed. 



/X6 



COMMISSIONER'S DECISIONS, 

Ex parte Kenton. 

Decided August 1, 100G. 

Trade-Mark— Amendment. 

Where applicant wishes to file in an application for tradc- 

f mark registration an amended declaration containing a state- 
ment ot exclusive use and it appears that the application as 
originally filed contained such a statement, hut that it was can- 
celed upon the finding that applicant's use of tho trade-mnrk 
had not been exclusive, and applicant thereupon unsuccessfully 

i sought registration of the mark as a technical trade-mark, Held 
that the amendment should not ho permitted. 

On petition. 

trade-mark for medicinal preparations. 

Messrs. Paul & Paul for the applicant. 
Moore, Acting Commissioner: 

This is a petition for leave to file in an application for 
trade-mark registration an amended declaration stating 
that the mark has been in exclusive use by tho applicant 
for the period of ten years next preceding the passage of 
the act of February 20, 1905. The petition also includes 
a request for rehearing in the matter of the appeal decided 
June 15, 1906. 

It appears from the Examiner's statement that the his- 
tory of this case is, in part, as follows: Tho application was 
originally filed with a declaration containing the state- 
ment of exclusive use which it is now desired to insert by 
amendment. The application while in this condition was 
involved in an interference. In the course of the interfer- 
ence and after testimony had been taken and a decision 
rendered by the Examiner of Interferences the case was 
remanded to the Primary Examiner to determine whether 
the applicant's claim of ten years' exclusive use was Jiofc 
defeated by facts established in the testimony taken in the 
interference. The Examiner of Trade-Marks found that 
the applicant's use of the mark had not been exclusive and 
that the applicant therefore was not entitled to registra- 
tion. These conclusions were embodied in a decision and 
a limit of appeal set. No appeal, however, was taken 
within this limit. The applicant, on the contrary, can- 
celed the statement of exclusive use from his application 
and sought registration of his mark as a technical trade- 
mark. The Examiner of Trade-Marks refused such regis- 
tration on the ground that the mark was descriptive, and 
an appeal was taken to tho Commissioner, who affirmed tho 
action of the Examiner in the decision of June 15, 1906. 

In view of the applicant's failure to appeal from the de- 
cision against him upon the question of exclusive use ren- 
dered in thej interference proceeding and in view of the 
subsequent consideration which has been accorded to this 
case by the Examiner of Trade-Marks and the Commis- 
sioner at the instance of the applicant, with all claims to 
registration on the ground of exclusive use removed there- 
from, it would he contrary to the principles of good prac- 
tice to permit him to amend, as now desired. 
The petition is denied. 



commission: 



'8 decisions, 



Ex parte Iowa Soap Company. 

Decided August 9, 100U. 
Trade-Mark— Exclusive Use. 

Held that the use. of the term ' ' Magicwashcr " as a trade-mark 
for soap cannot ho considered exclusivo under tho "ten-year 
clause' ' of section 5 of the Trade-Mark Act where it appears that 
the word "Magic" was in contemporaneous use for the sanio 
class of merchandise. 

On appeal. 

trade-mark for laundry-soap. 

Mr. Cyrus W. Rice and Mr. J. R. Edson for the appli- 
cant. 
Moore, Acting Commissioner: 

This is an appeal from the decision of the Examiner of 
Trade-Marks rejecting appellant's application for regis- 
tration of the word-symbol "Magic-washer" as a trade- 
mark for soap on the ground of its similarity to the pre- 
viously-registered mark "Magic" for the same class of 
merchandise. Tho application was filed under the "ten- 
years' clause ' ' of section 5 of the Trade-Mark Act. Whether 
the applicant's use of the mark "Magic-washer" can be 
considered exclusive, as alleged by him, depends upon 
whether the two marks under consideration are so similar 
that the use of one can, in view of the contemporaneous 
use of tho other, be properly termed exclusive. 

The Examiner of Trade-Marks relies upon the decision 
in the N. K. Fairbanlc Company v. Luckel, King cfc Colce 
Soap Company, (92 O. G., 1437,) wherein the court held 
that the words "Gold Drop" infringed the words "Gold 
Bust" as applied to a washing-powder. This decision 
was based exclusively upon the similarity of the words 
and regardless of the fact that there was no resemblance 
between the packages and labels used by the parties other 
than in the use of the words "Gold Dust" and "Gold 
Drop." 

The word "Magic" is the salient feature of the marks 
involved in the present case, and I am of the opinion that 
the ordinary purchaser who had merely seen an adver- 
tisement or been told the name of the article would be 
likely to mistake one for the other. Upon similar reason- 
ing the name "Gold Drop" was held to infringe "Gold 
Dust," and I am of the opinion that the Examiner of 
Trade-Marks was right in refusing to register the word 
"Magicwasher." 

The decision of the Examiner of Trade-Marks is affirmed. 



WW. 



1 



EE'S I'EOISIONS. 



/zs~ &. dK] 2.7^ 



Ex parte Pens Tobacco Co. 

1. Trade-Mark— Affidavits. - •— , 

,"''" ppeal affidavits relative to 

ament of the registrant's mark in which his applicj 
"""''' ""' ■""> ,: n was under the In- 

»<** that the ease should ben udedtothe 

Examiner oi Trade-Marks for consideration ol the affido rits. 
-• Appeal— affidavits, 

iderationshouldnotbegivcntoaffidaviti which 
were not before the tribunal from which the appeal is taken, 
Ox APPEAL. 

TRADE-MASK FOB SMOKING AND CHEWING TOBACCO. 

i.tre&G. Diettyiclt & Co. for the applicant. 
Moore, Act!,:// ( 'ommissioner: 

This is an appeal from the action of the Examiner of 
rrade-Marks refusing to register the mark presented by 
the above-entitled application. 

. Sl,bse <rntly to the filing of the appeal the attorney For 

'"apphcanl hied an affidavit to the effeel that he has 

I" 1 '" m! °™f ^at the su,,,,s„r. f Keid, Murdoch and 

Fisher abandoned the use of the trade-mark "Sterling" a 

long t.me ago, l„„ thai the exact date of abandonment 

'•'""'''t'"- ascertained, [t is a well-settled principle thai 

J";"'" ;'"■" t "' : ' 1 — , «'"" 1 "" Weal thai was „,„ 

l,0 , fo,e the tribl,n al from which the appeal is taken The 
"g4""*» b